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. 88067361 STUDEBAKER(Standard Characters, see http://uspto.report/TM/88067361/mark.png) has been amended as follows:

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

Response (see attached)

EVIDENCE
Evidence in the nature of Response has been attached.
Original PDF file:
evi_381125138-20191127113723769182_._STUDEBAKER_2019_2ROA.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for electric, hand-held kitchen appliances, namely, electric mixers and other items in the nature of toasters, popcornmakers, sandwich makers, juicers
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: electric, hand-held kitchen appliances, namely, electric mixers and other items in the nature of toasters, popcornmakers, sandwich makers, juicers; Electric, hand-held kitchen appliances, namely, electric mixers and other items in the nature of electric juicersClass 007 for Electric, hand-held kitchen appliances, namely, electric mixers and other items in the nature of electric juicers
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for electric toasters; electric toaster ovens; electric popcorn poppers
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: Electric toasters; electric toaster ovens; electric popcorn poppers; electric, hand-held kitchen appliances, namely, toasters, popcorn makers in the nature of popcorn poppers, and sandwich makersClass 011 for Electric toasters; electric toaster ovens; electric popcorn poppers; electric, hand-held kitchen appliances, namely, toasters, popcorn makers in the nature of popcorn poppers, and sandwich makers
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.

The applicant's current attorney information: Jeffrey C. Katz. Jeffrey C. Katz of DAVIS & GILBERT LLP, is located at

      1740 BROADWAY
      NEW YORK, New York 10019
      US
The docket/reference number is 9839-11-0.

The phone number is 212-468-4800.

The fax number is (212) 468-4888.

The email address is jkatz@dglaw.com

The applicants proposed attorney information: Jeffrey C. Katz. Other appointed attorneys are the other attorneys of Davis & Gilbert LLP. Jeffrey C. Katz of DAVIS & GILBERT LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1740 BROADWAY
      NEW YORK, New York 10019
      United States
The docket/reference number is 9839-11-0.

The phone number is 212-468-4800.

The fax number is (212) 468-4888.

The email address is jkatz@dglaw.com

Jeffrey C. Katz 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: JEFFREY C. KATZ. JEFFREY C. KATZ of DAVIS & GILBERT LLP, is located at

      1740 BROADWAY
      NEW YORK, New York 10019
      US
The docket/reference number is 9839-11-0.

The phone number is 212-468-4800.

The fax number is (212) 468-4888.

The email address is jkatz@dglaw.com; chinton@dglaw.com

The applicants proposed correspondence information: Jeffrey C. Katz. Jeffrey C. Katz of DAVIS & GILBERT LLP, is located at

      1740 BROADWAY
      NEW YORK, New York 10019
      United States
The docket/reference number is 9839-11-0.

The phone number is 212-468-4800.

The fax number is (212) 468-4888.

The email address is jkatz@dglaw.com; chinton@dglaw.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5871217 and 3509858.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3509858


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
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Jeffrey C. Katz/     Date: 11/27/2019
Signatory's Name: Jeffrey C. Katz
Signatory's Position: Applicant's Attorney, NY Bar Member

Signatory's Phone Number: (212) 468-4800

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.

Mailing Address:    JEFFREY C. KATZ
   DAVIS & GILBERT LLP
   
   1740 BROADWAY
   NEW YORK, New York 10019
Mailing Address:    Jeffrey C. Katz
   DAVIS & GILBERT LLP
   1740 BROADWAY
   NEW YORK, New York 10019
        
Serial Number: 88067361
Internet Transmission Date: Wed Nov 27 12:13:29 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20191127121329677
835-88067361-700558a4c13030c4e3bbe1b3c78
790bcdb1165f145c1f7daf16a14b13e785121-N/
A-N/A-20191127113723769182