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. 88067248 AMP HUMAN PERFORMANCE(Standard Characters, see http://uspto.report/TM/88067248/mark.png) has been amended as follows:

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

Applicant respectfully responds to the Office Action issued on October 29, 2018 (the "Office Action"), for the Applicant's mark, "AMP HUMAN PERFORMANCE" (the "Mark"). Registration of the Mark has been refused based on the Examining Attorney's position that the mark is confusingly similar to the marks in U.S. Registration Nos. 2236722, 5297853 and 5470321. Applicant, however, respectfully disagrees with the Examining Attorney's objection to registration of the Mark as set forth more fully below. First, as noted in the Office Action, Human Performance is merely descriptive of both Applicant's goods and of the registrations identified as confusingly similar to Applicant's Mark. Applicant's goods, and the goods identified in Reg. Nos. 2236722, 5297853 and 5470321 are both related to supplements. As a result, "Human Performance" cannot be descriptive of only Applicant's Mark, while not at the same time being descriptive of of the marks registered under Reg. Nos. 2236722, 5297853 and 5470321. In each of these instances "Human Performance" is used as it relates to supplements that, as Examiner notes, "are for improving the athletic performance of human beings." Further, brief search of the USPTO database reveals the USPTO has consistently found "Human Performances" to be descriptive in dietary and nutritional supplement goods or services. This is evidence by multiple registrations existing together in Class 041 that all use "Human Performance." See Reg. Nos. a. 4950104, 4882637, 4673999, 5673788, and 5065695. In light of the above, the only part of the mark that should be considered for a confusingly similar analysis are "AMP," for Applicant's marks, and "Maximum" and "MHP" for the alleged confusingly similar marks. The Examiner has not identified these portions of the mark as being confusingly similar, and Applicant would agree. Therefore, a likelihood of confusion does not exist. With respect to the other deficiencies raised in the Office Action, Applicant accepts the Examiner's proposed revisions to goods description. Specifically, Applicant requests the description be revised as follows: ?Medicated topical preparations for the delivery of supplements, namely, nutritional supplements in the form of topically applied creams, lotions, gels, liquids, salves, ointments and emollients used for improving wellness and promoting athletic performance and recovery? Finally, Applicant agrees to adding of the disclaimer "Human Performance."

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for medicated topical preparations for the delivery of supplements, namely, creams, lotions, gels, liquids, salves, ointments, and emollients for improving wellness, athletic performance, and recovery
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: medicated topical preparations for the delivery of supplements, namely, creams, lotions, gels, liquids, salves, ointments, and emollients for improving wellness, athletic performance, and recovery; Medicated topical preparations for the delivery of supplements, namely, nutritional supplements in the form of topically applied creams, lotions, gels, liquids, salves, ointments and emollients used for improving wellness and promoting athletic performance and recoveryClass 005 for Medicated topical preparations for the delivery of supplements, namely, nutritional supplements in the form of topically applied creams, lotions, gels, liquids, salves, ointments and emollients used for improving wellness and promoting athletic performance and recovery
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
Disclaimer
No claim is made to the exclusive right to use Human Performance apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Clint D. Cadwallader/     Date: 04/29/2019
Signatory's Name: Clint D. Cadwallader
Signatory's Position: Associate Attorney, McGrath North Mullin & Kratz, PC LLO

Signatory's Phone Number: 402-633-6870

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: 88067248
Internet Transmission Date: Mon Apr 29 10:59:51 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20190429105951095
718-88067248-620a7c92ccfea4933f998c1d357
cde7c3ccdbd5cb646bba98702a1fc01856538fbe
-N/A-N/A-20190429103943198455