TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88056128 NORTH AMERICAN RESCUE(Standard Characters, see http://uspto.report/TM/88056128/mark.png) has been amended as follows:

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

AMENDMENT

            Applicant requests that the present application be amended to include the following statement:

The mark has become distinctive of the goods through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

REMARKS

            In an Office action dated May 3, 2019, the Examining Attorney refused the present application based on based on 15 U.S.C. §1052(e)(2) because of an allegation that the present mark is primarily geographically descriptive of the origin of applicant’s goods. Applicant respectfully traverses the refusal for the following reasons.

 

I.          REJECTION UNDER §1052(e)(2)

            As noted above, the present application was also refused because of an allegation that the proposed mark was merely geographically descriptive. Nonetheless, the present use of NORTH AMERICAN RESCUE is not merely geographically descriptive. Here, the “North American” portion of the mark is at most suggestive of use for a product (e.g., provided in a combat zone). The covered fields claimed by this application do not apply to an actual rescue, but to goods that could be used to treat injuries that may lead to the need of rescue. Such products could be provided only within North America but across the globe. Therefore, there is no place association between “North American” and the goods identified in the application. As a result, Applicant respectfully requests that the refusal be withdrawn.

            Moreover, Applicant notes that the mark has been continually used for at least the last five years in all relevant fields, and is presently amended as such. Thus, if necessary, Applicant respectfully requests registration of the mark under §1052(f).

 

III.       CONCLUSION

In view of the foregoing, it is believed that this application is now in condition for prompt publication.  Favorable action is therefore requested.

 

The applicant's current attorney information: J. Crockett Hailey, III. J. Crockett Hailey, III of DORITY & MANNING, P.A., is located at

      P.O. BOX 1449
      GREENVILLE, South Carolina 29602-1449
      US
The docket/reference number is NAR-156-TM.

The phone number is 864-271-1592.

The fax number is 864-233-7342.

The email address is docketing@dority-manning.com

The applicants proposed attorney information: J. Crockett Hailey, III. Other appointed attorneys are James M. Bagarazzi, Richard M. Moose, Stephen E. Bondura, Timothy A. Cassidy, Tim F. Williams, Jason W. Johnston, Neil M. Batavia, Alan R. Marshall, J. Parks Workman, Thomas D. Huycke, Jason A. Jennings, Seth E. Jones, Allison L. Richmond. J. Crockett Hailey, III of DORITY & MANNING, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 1449
      GREENVILLE, South Carolina 29602-1449
      United States
The docket/reference number is NAR-156-TM.

The phone number is 864-271-1592.

The fax number is 864-233-7342.

The email address is docketing@dority-manning.com

J. Crockett Hailey, III submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: J. CROCKETT HAILEY, III. J. CROCKETT HAILEY, III of DORITY & MANNING, P.A., is located at

      P.O. BOX 1449
      GREENVILLE, South Carolina 29602-1449
      US
The docket/reference number is NAR-156-TM.

The phone number is 864-271-1592.

The fax number is 864-233-7342.

The email address is docketing@dority-manning.com

The applicants proposed correspondence information: J. Crockett Hailey, III. J. Crockett Hailey, III of DORITY & MANNING, P.A., is located at

      P.O. BOX 1449
      GREENVILLE, South Carolina 29602-1449
      United States
The docket/reference number is NAR-156-TM.

The phone number is 864-271-1592.

The fax number is 864-233-7342.

The email address is docketing@dority-manning.com; deniseg@dority-manning.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /J. Crockett Hailey, III/      Date: 10/03/2019
Signatory's Name: J. CROCKETT HAILEY, III
Signatory's Position: Attorney of Record, South Carolina Bar Member
Signatory's Phone Number: 864-271-1592


Request for Reconsideration Signature
Signature: /j. crockett hailey, iii - drg/     Date: 10/03/2019
Signatory's Name: J. CROCKET HAILEY, III
Signatory's Position: Attorney of Record, South Carolina Bar Member

Signatory's Phone Number: 864-271-1592

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    J. CROCKETT HAILEY, III
   DORITY & MANNING, P.A.
   
   P.O. BOX 1449
   GREENVILLE, South Carolina 29602-1449
Mailing Address:    J. Crockett Hailey, III
   DORITY & MANNING, P.A.
   P.O. BOX 1449
   GREENVILLE, South Carolina 29602-1449
        
Serial Number: 88056128
Internet Transmission Date: Thu Oct 03 13:21:03 EDT 2019
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-201910031321035
61966-88056128-610a52e4575962d4c7cf9c5d0
79b73631f8c59a9873cae2b9e4decd90583c338f
b2-N/A-N/A-20191003120831826510