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. 88095511 EVERY MILE. EVERY MOMENT. EVERY MEMORY.(Standard Characters, see http://uspto.report/TM/88095511/mark.png) has been amended as follows:

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

In response to the Office Action mailed October 15, 2019, reconsideration is respectfully requested in view of the following remarks.

REMARKS

Domicile Requirement

Applicant provides herewith its domicile address of 340 Victory Lane, Lincoln, NE 68528. 

Specimen Unacceptable

The Office Action acknowledges that the original specimen supports online retail sales services, yet objects that it is not clearly connected to the identified catalog ordering services.  Applicant submits that the original specimen is sufficient, but to advance prosecution Applicant submits supplemental specimens and remarks.  These include the original specimen and a supplemental specimen which should be construed together.

The original specimen is promotional materials displaying the present mark for Applicant’s catalog ordering services.  The promotional materials may be seen on Applicant’s website and/or in advertisements on third party websites.  When a consumer views the original specimen, the consumer is directed to the homepage of Applicant’s website, either using information displayed in the promotional materials or by using an embedded, click-through link.   

From the homepage, the consumer can select and purchase products from Applicant’s catalog.  The products listed for sale on Applicant’s website constitute an online catalog from which consumers may order products.  To confirm this, the supplemental specimen shows an image from Applicant’s homepage explicitly referencing one of Applicant’s catalogs. 

Applicant respectfully submits that the substitute specimens submitted herewith were in use in commerce at least as early as the first use date submitted with the statement of use.  Application respectfully requests withdrawal of the specimen objections.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Catalog ordering services featuring automobile supplies and equipment, namely, race, performance and hot rod parts and accessories
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.

In International Class 035, the mark was first used at least as early as 08/00/2019 and first used in commerce at least as early as 08/00/2019 .

Proposed: Class 035 for Catalog ordering services featuring automobile supplies and equipment, namely, race, performance and hot rod parts and accessories

Deleted Filing Basis: 1(b)
In International Class 035, the mark was first used at least as early as 08/00/2019 . and first used in commerce at least as early as 08/00/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Promotional materials and catalog .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-206532382-20191016160212246477_._EVERY_MILE.__EVERY_MOMENT.__EVERY_MEMORY.__Specimen.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Original PDF file:
SPU0-206532382-20191016160212246477_._Speedway_-_Catalog_Specimen.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Speedway Motors, Inc., a corporation of Nebraska, having an address of
      P.O. Box 81906
      Lincoln, Nebraska 68501
      United States

      XXXX (not authorized)
Proposed: Speedway Motors, Inc., a corporation of Nebraska, having an address of
      340 Victory Lane
      Lincoln, Nebraska 68528
      United States
      XXXX (authorized)

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: /Charles J. Meyer/      Date: 10/16/2019
Signatory's Name: Charles J. Meyer
Signatory's Position: Attorney of Record, Indiana Bar Member
Signatory's Phone Number: (317) 634-3456


Response Signature
Signature: /Charles J. Meyer/     Date: 10/16/2019
Signatory's Name: Charles J. Meyer
Signatory's Position: Attorney of Record, Indiana Bar Member

Signatory's Phone Number: 3177134934

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.

        
Serial Number: 88095511
Internet Transmission Date: Wed Oct 16 16:07:47 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20191016160747900
295-88095511-6107ecd0a418f8ba122b2be2ec4
0b74cf4fbe2d85abd907bada06416536fc4b8-N/
A-N/A-20191016160212246477