Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88032236 EATA (Stylized and/or with Design, see http://uspto.report/TM/88032236/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Advisory PRIOR FILED APPLICATION U.S. Application Serial No. 87864269 is now abandoned (see attached). Applicant requests that the Examiner eliminate this rejection from Applicant's application. SECTION 2(e) REFUSAL - MERELY DESCRIPTIVE Applicant asks that this refusal be reconsidered for the following reasons: The mark is unique as presented with a logo. The applicant describes the logo as: the color green around the "e" in the logo signifies "ecologically friendly." The circle shape signifies the planet and both the global use of the document and the global communications network via which the ATA Carnet is downloaded. The font in the applied for mark, eATA, is the same font (Garamond) and color (Blue) as in many of applicant?s company logos. Attached please find these additional logos used in interstate commerce. This aspect makes the mark distinctive, not merely descriptive, to the branding of applicant's ATA Carnet issuing service. The logo gives the mark further meaning and clarity as being a mark that is not "merely descriptive". The abbreviation "ATA" is commonly used in applicant's industry to denote an ATA Carnet, which is defined as "an international customs and temporary export-import document. ATA Carnets are used to clear customs in 87 countries and territories without paying import duties and import taxes on merchandise that will be re-exported within 12 months." The Examining Attorney instructs, "Please see attached third-party website evidence obtained from a number of third-party websites, including Boomerang Carnets." The attached 3rd-party website evidence includes: 1. Applicant's company, boomerang carnets (as if they are a 3-party to themselves); 2. An article from shippingsolutions.com website that contains an interview with Curt Wilson (applicant's CEO). 3. Websites of four organizations that are the applicant?s governing bodies (WCO, ICC, USCIB & export.gov (the US gov't.) which, precludes them as 3rd parties. There is no other conclusion than "ATA" is not commonly used if the examples the Examining Attorney provides are from, not only the applicant but, an interview with applicant and four governing bodies of the applicant. This proves that "ATA" is not common because the examples provided are applicant?s or governing bodies over the applicant. "ATA" is not commonly used in applicant's industry to denote an ATA Carnet as the Examining Attorney claims, quite the opposite. The word "Carnet" is commonly used to denote an ATA Carnet not "ATA". This makes the mark distinctive. The mark intentionally highlights the specific use of the document not the generic, as "Carnet" does. A "carnet" can be any "book of tickets" and is not specific to the temporary admission of goods across international borders without payment of import duty or taxes. Because "ATA" is an acronym for French/English "Admission Temporaire/Temporary Admission", it makes sense to register the mark as the acronym, or abbreviation. The abbreviation denotes efficiency, expediency as does the "e" before it. An entity, either individual or organizational, requiring an ATA Carnet will understand from this mark that it represents an ATA Carnet, not any other "Carnet" and is downloadable via the global communications network. Over the 35 years applicant's company has been in business they have been perceived as the leading company in the ATA Carnet business both in the United States and elsewhere in the world. The United States is the most technologically advanced carnet country and this is due, in large part, to Corporation for International Business | boomerang carnets advancing the industry with technology, specifically the introduction of online applications, surety bonds and, distribution. In fact, applicant is the only company in the world able to issue ATA Carnets in more than one country (the U.K. as of 2015) and this is due to its technological superiority and protection of its intellectual property. The registration of the mark "eATA" is distinctive for these stated reasons. Further, the actual goods for the ATA Carnet are unique from other marks and more specifically, is described below: An ATA Carnet or "carnet" is an internationally accepted customs document issued by 87 countries and territories. It is presented when entering a country in the ATA Carnet system with merchandise or equipment that will be re- exported within 6-12 months. It is sometimes called The Merchandise Passport for Boomerang Freight. Upon presentation, the ATA Carnet permits the equipment or merchandise to clear customs without the payment of import duties and import taxes* such as VAT or GST. Thus, the use of an ATA Carnet is a way of temporarily importing into foreign countries without payment of import duties and taxes. ATA Carnets also serve as the U.S. Registration of Goods, (CBP Form 4455) upon re-importation thus deferring payment of duty on those goods. ADVISORY - POSSIBLY GENERIC It is respectfully requested that the Trademark Examining Attorney re-consider the statement that "the applied for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant's goods." The mark with the distinctively colored logo is a very unique mark and the combination of the two elements makes it a very unusual mark and not "generic". The term "ATA" is not known by the general public and with the "e" in front of "ATA" as well as the distinctive colored logo, it is a very original mark and not a "commonplace" term. Further, there are many registered and published and allowed trademarks which have been registered with the "e" in front of the main mark which are not as unique as applicant's mark, yet those marks have been approved and/or registered on the Principal Register with the U.S. Trademark Office. Such examples are: U.S. Application No. 88272471 for EWEATHER; U.S. Trademark Registration No. 4587954 for EACCESS; U.S. Registration No. 4129242 for ESURANCE; U.S. Registration No. 5,070,371 for eBROKER; U.S. Registration No. 5,398,102 for EADVANTAGE; U.S. Registration No. 5,392,168 for EADVANTAGE; U.S. Registration No. 5,475,067 for EHOME; U.S. Registration No. 5,070,300 for EHOME; U.S. Registration No. 3,500,825 for EVITE; U.S. Registration No. 2,655,403 for EVITE; U.S. Registration No. 2,650,957 for EVITE; U.S. Registration No. 3,216,771 for eAcess; U.S. Registration No. 2,130,856 for ECAR; U.S. Registration No. 2,132,926 for ECAR; U.S. Registration No. 2,766,660 for ECAR; U.S. Registration No. 5,474,800 for ECAR; U.S. Registration No. 3,976,448 for EMAIL; U.S. Registration No. 1,466,039 for EMAIL. There are many more registered marks which include the term "EMAIL". Attached are the first two original marks which were registered as EMAIL. The above registered and applied for marks show that the (e) in front of a mark has been registered in many instances and applicant requests that the unique mark "eATA" be allowed registration as well on the Principal Register. There are also many registered ATA marks (attached) which indicates that the term ATA is not generic or merely descriptive. Further, applicant is the owner of the following mark which also has the acronym "ATA" used in a currently registered mark. This illustrates that the owner, Corporation for International Business show use of the "ATA" mark as early as 7/27/2011. Their currently registered "ATA" mark (attached) is as follows: U.S. Registration No. 4,235,572 for ATA CARNET SERVICE CENTER registered on October 30, 2012. It is requested that the application for the mark eATA be allowed registration on the Principal Register. Applicant has provided cited registered marks with the U.S. Trademark Office which have the letter (e) in the front of their marks which indicates that the Trademark Office has approved many marks in this format. The applicant has also provided amendments to (1) the revised color claim as suggested by the Examining Attorney and (2) and the revised description of the mark. Applicant respectfully requests that this application be approved.

EVIDENCE
Evidence in the nature of The evidence consists of the now abandoned U.S. Serial No. 87864269; Examples of similar company logos; 3rd--party website evidence; Other E-marks; U.S. Registration No. 4,235,572 for ATA CARNET SERVICE CENTER has been attached.
Original PDF file:
evi_241411235-20190506165713226458_._eATA_CARNET_-_Abandoned.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
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Original PDF file:
evi_241411235-20190506165713226458_._CARNET_LOGOS.pdf
Converted PDF file(s) ( 4 pages)
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Original PDF file:
evi_241411235-20190506165713226458_._Attachment__1.pdf
Converted PDF file(s) ( 5 pages)
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Original PDF file:
evi_241411235-20190506165713226458_._Attachment__2.pdf
Converted PDF file(s) ( 19 pages)
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Original PDF file:
evi_1-241411235-20190506165713226458_._Attachment__3.pdf
Converted PDF file(s) ( 15 pages)
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Original PDF file:
evi_241411235-20190506165713226458_._E-MARKS.pdf
Converted PDF file(s) ( 39 pages)
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Original PDF file:
evi_241411235-20190506165713226458_._ATA_Marks.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
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Original PDF file:
evi_241411235-20190506165713226458_._ATA_CARNET_SERVICE_CENTER.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic carnet documents for exporters downloadable via the global communications network, namely, an international customs document that facilitates duty-free and tax free temporary importation into foreign countries, and the re-exportation from those foreign back into the origin country
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Electronic carnet documents for exporters downloadable via the global communications network, namely, an international customs document that facilitates duty-free and tax free temporary importation into foreign countries, and the re-exportation from those foreign back into the origin country; An internationally accepted customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign countries back into the origin country downloadable via the global communications network, namely, secure ATA Carnet documents for exportersClass 009 for An internationally accepted customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign countries back into the origin country downloadable via the global communications network, namely, secure ATA Carnet documents for exporters
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Color Claim
The color(s) white, lime green and blue is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "eATA" with the letter "e" being white inside a lime green circle, and with the wording "ATA".

SIGNATURE(S)
Response Signature
Signature: /Charles F. Meroni, Jr./     Date: 05/06/2019
Signatory's Name: Charles F. Meroni, Jr.
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 847-304-1500

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88032236
Internet Transmission Date: Mon May 06 18:22:45 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190506182245948
558-88032236-62075923374c89fc81e74b36def
458f6f317b61a5cf27b2a0973ad23922ddda1cc3
-N/A-N/A-20190506165713226458