| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88056128 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88056128/mark.png |
| LITERAL ELEMENT | NORTH AMERICAN RESCUE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
AMENDMENT Applicant accepts the additional class suggestion of the Examining Attorney. Please amend the goods and services listing in the present application as follows: Class 5: Wound dressings; gauze; bandages for skin wounds in the nature of entry and exit wound patches and seals Class 10:
REMARKS In an Office action dated October 28, 2018, the Examining Attorney refused registration for the present application (U.S. Application Serial No. 88/056,128 for NORTH AMERICAN RESCUE) based on 15 U.S.C. §1052(d) because of an alleged likelihood of confusion with the mark of a pending application (U.S. Application Serial No. 88/013,056). The Examining Attorney also 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. In addition, the Office Action requires an amendment to the goods and services of the present application. Applicant respectfully traverses the refusal for the following reasons.
I. REJECTION UNDER §1052(d) As noted above, the present application was refused because of an alleged likelihood of confusion with the mark of a pending application (U.S. Application Serial No. 88/013,056). However, Applicant is the owner of U.S. Application Serial No. 88/013,056, as evidenced by the attached Trademark Assignment Cover Sheet. As a result, Applicant respectfully requests that the refusal be withdrawn.
II. 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. However, Applicant has already obtained registration of the mark NORTH AMERICAN RESCUE (U.S. Registration No. 3717370) for the related service “on-line mail order catalog services and on-line retail store services both featuring a wide variety of combat casualty care goods, supplies and equipment; mail order catalog services and retail store services both featuring a wide variety of combat casualty care goods, supplies and equipment.” As was the case there, 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. 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.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_19915170100-20190412153936406464_._NAR-151-TM_-_Assignment_Confirmation.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\561\88056128\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\561\88056128\xml4\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | a copy of the Assignment Recordation cover Sheet showing recordation of the Assignment from NAR TRAINING, LLC to NORTH AMERICAN RESCUE, LLC |
| GOODS AND/OR SERVICES SECTION (010)(current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| Medical apparatus and products, namely, gauze/wound dressing, entry/exit wound patches and seals, needle/catheter assemblies, saline lock kits, tourniquets, needle/sharps containers, retention band for securing IV hose, hypothermia prevention blankets, kits and apparatus | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/30/2008 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/30/2008 |
| GOODS AND/OR SERVICES SECTION (010)(proposed) | |
| INTERNATIONAL CLASS | 010 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Needles for medical use; catheters and parts and fittings therefor; medical devices for use in cannulation or to stem the flow of traumatic bleeding, namely, tourniquets; medical waste containers for the disposal of needles and sharps; blankets for medical purposes, namely, blankets for hypothermia prevention; medical devices for securing intravenous catheter hoses in the nature of a retention band; saline lock kits comprised primarily of needles for medical use, catheters and parts and fittings therefore, tubing for use with catheters, medical devices for securing intravenous catheter hoses in the nature of a retention band, saline solution for medical purposes, gauze, and wound dressing | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/30/2008 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/30/2008 |
| GOODS AND/OR SERVICES SECTION (005)(class added) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Wound dressings; gauze; bandages for skin wounds in the nature of entry and exit wound patches and seals | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/30/2008 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/30/2008 |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| APPLICATION FOR REGISTRATION PER CLASS | 275 |
| TOTAL FEES DUE | 275 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /J. Crockett Hailey, III/ |
| SIGNATORY'S NAME | J. CROCKETT HAILEY, III |
| SIGNATORY'S POSITION | Attorney of Record, South Carolina Bar Member |
| SIGNATORY'S PHONE NUMBER | 864-271-1592 |
| DATE SIGNED | 04/12/2019 |
| RESPONSE SIGNATURE | /j. crockett hailey, III - drg/ |
| SIGNATORY'S NAME | J. CROCKET HAILEY, III |
| SIGNATORY'S POSITION | Attorney of Record, South Carolina Bar Member |
| SIGNATORY'S PHONE NUMBER | 864-271-1592 |
| DATE SIGNED | 04/15/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 15 11:23:47 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20190415112347581272-8805 6128-620fd1a87e6fce9e4bcb d6787185a213d76658bf6d87c 832b216f605542c31830-CC-1 0669-20190412153936406464 |
| 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) |
AMENDMENT
Applicant accepts the additional class suggestion of the Examining Attorney. Please amend the goods and services listing in the present application as follows:
Class 5: Wound dressings; gauze; bandages for skin wounds in the nature of entry and exit wound patches and seals
Class 10: Medical apparatus and products, namely gauze/wound dressing, entry/exit wound patches and seals, needle catheter assemblies, saline lock kits, tourniquets, needle/sharps
containers, retention band for securing IV hose, hypothermia prevention blankets, kits and apparatus Needles for medical use; catheters and parts and fittings therefor; medical devices for use
in cannulation or to stem the flow of traumatic bleeding, namely, tourniquets; medical waste containers for the disposal of needles and sharps; blankets for medical purposes, namely, blankets for
hypothermia prevention; medical devices for securing intravenous catheter hoses in the nature of a retention band; saline lock kits comprised primarily of needles for medical use, catheters and parts
and fittings therefore, tubing for use with catheters, medical devices for securing intravenous catheter hoses in the nature of a retention band, saline solution for medical purposes, gauze, and
wound dressing
REMARKS
In an Office action dated October 28, 2018, the Examining Attorney refused registration for the present application (U.S. Application Serial No. 88/056,128 for NORTH AMERICAN RESCUE) based on 15 U.S.C. §1052(d) because of an alleged likelihood of confusion with the mark of a pending application (U.S. Application Serial No. 88/013,056). The Examining Attorney also 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. In addition, the Office Action requires an amendment to the goods and services of the present application. Applicant respectfully traverses the refusal for the following reasons.
I. REJECTION UNDER §1052(d)
As noted above, the present application was refused because of an alleged likelihood of confusion with the mark of a pending application (U.S. Application Serial No. 88/013,056). However, Applicant is the owner of U.S. Application Serial No. 88/013,056, as evidenced by the attached Trademark Assignment Cover Sheet. As a result, Applicant respectfully requests that the refusal be withdrawn.
II. 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. However, Applicant has already obtained registration of the mark NORTH AMERICAN RESCUE (U.S. Registration No. 3717370) for the related service “on-line mail order catalog services and on-line retail store services both featuring a wide variety of combat casualty care goods, supplies and equipment; mail order catalog services and retail store services both featuring a wide variety of combat casualty care goods, supplies and equipment.” As was the case there, 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. 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.
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.
