Response to Office Action

ASCOT

Ascot Racecourse Limited

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88061311
LAW OFFICE ASSIGNED LAW OFFICE 112
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88061311/mark.png
LITERAL ELEMENT ASCOT
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
GOODS AND/OR SERVICES SECTION (014)(current)
INTERNATIONAL CLASS 014
DESCRIPTION
Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases for watches; parts and fittings for the aforesaid goods
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER UK0000317420
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
11/04/2016
GOODS AND/OR SERVICES SECTION (014)(proposed)
INTERNATIONAL CLASS 014
TRACKED TEXT DESCRIPTION
Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments; ornaments of precious metal in the nature of jewellery; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases for watches; cases adapted for watches; parts and fittings for the aforesaid goods; structural parts and fittings for the aforesaid goods
FINAL DESCRIPTION
Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments of precious metal in the nature of jewellery; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases adapted for watches; structural parts and fittings for the aforesaid goods
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3174207
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
11/04/2016
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-381121538-165123031_._ASCOT_UK_Registration.pdf
       CONVERTED PDF FILE(S)
       (4 pages)
\\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0003.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0005.JPG
GOODS AND/OR SERVICES SECTION (025)(current)
INTERNATIONAL CLASS 025
DESCRIPTION
Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER UK0000317420
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
11/04/2016
GOODS AND/OR SERVICES SECTION (025)(proposed)
INTERNATIONAL CLASS 025
TRACKED TEXT DESCRIPTION
Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks, pullovers, track suits and training suits, gloves, horse riding tops and breeches; Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks in the nature of riding pants, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats; headgear, namely, hats, caps being headwear, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats
FINAL DESCRIPTION
Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks in the nature of riding pants, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps being headwear, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3174207
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
11/04/2016
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU1-381121538-165123031_._ASCOT_UK_Registration.pdf
       CONVERTED PDF FILE(S)
       (4 pages)
\\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0006.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0007.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0008.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\613\88061311\xml6\ROA0009.JPG
SIGNATURE SECTION
RESPONSE SIGNATURE /Anna P. Chang/
SIGNATORY'S NAME Anna P. Chang
SIGNATORY'S POSITION Associate attorney, Sideman & Bancroft LLP, California bar member
SIGNATORY'S PHONE NUMBER 415-392-1960
DATE SIGNED 02/27/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Feb 27 17:12:07 EST 2019
TEAS STAMP USPTO/ROA-XX.XXX.XX.XX-20
190227171207364360-880613
11-62057f862744e6f460f1fd
6fc192856090b24d4845a2707
879965ddd558294-N/A-N/A-2
0190227165123031476



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. 88061311 ASCOT (Stylized and/or with Design, see http://uspto.report/TM/88061311/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases for watches; parts and fittings for the aforesaid goods
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000317420 registered 11/04/2016 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments; ornaments of precious metal in the nature of jewellery; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases for watches; cases adapted for watches; parts and fittings for the aforesaid goods; structural parts and fittings for the aforesaid goodsClass 014 for Precious metals and their alloys; jewellery, imitation jewellery; semi-precious and precious stones; horological and chronometric instruments; watches, clocks; alarm clocks; cufflinks; tie pins; medallions; ornaments of precious metal in the nature of jewellery; badges of precious metals; key rings and key chains; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; jewellery cases; cases adapted for watches; structural parts and fittings for the aforesaid goods
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3174207 registered 11/04/2016 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-381121538-165123031_._ASCOT_UK_Registration.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000317420 registered 11/04/2016 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks, pullovers, track suits and training suits, gloves, horse riding tops and breeches; Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks in the nature of riding pants, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats; headgear, namely, hats, caps being headwear, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hatsClass 025 for Clothing, namely, T-shirts, sweatshirts, shirts, polo shirts, jumpers, waistcoats, morning coats, socks, waist belts, jackets, blazers, jerseys, sweaters, skirts, dresses, gowns, blouses, cardigans, pants, trousers, jeans, sweat pants, rain wear, overcoats, waterproof jackets, waterproof trousers, knitted shirts, knitted underwear, sweat bands, suspenders, pajamas, robes, bed jackets, night gowns, horse-racing and riding gloves, saris, underwear, jockey silks in the nature of riding pants, pullovers, track suits and training suits, gloves, horse riding tops and breeches; footwear; headgear, namely, hats, caps being headwear, top hats, bowler hats, sun visors, headbands and non-protective horse-racing and riding hats
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3174207 registered 11/04/2016 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-381121538-165123031_._ASCOT_UK_Registration.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

SIGNATURE(S)
Response Signature
Signature: /Anna P. Chang/     Date: 02/27/2019
Signatory's Name: Anna P. Chang
Signatory's Position: Associate attorney, Sideman & Bancroft LLP, California bar member

Signatory's Phone Number: 415-392-1960

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: 88061311
Internet Transmission Date: Wed Feb 27 17:12:07 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190227171207364
360-88061311-62057f862744e6f460f1fd6fc19
2856090b24d4845a2707879965ddd558294-N/A-
N/A-20190227165123031476


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