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. 88104274 PACT(Standard Characters, see http://uspto.report/TM/88104274/mark.png) has been amended as follows:

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

In the Office Action dated October 1, 2018, the Examining Attorney requested amendments to the identification of goods.  Accordingly, Applicant has amended the identification of goods as suggested by the Examining Attorney and in accordance with the USPTO’s Manual of Acceptable Identification of Goods. 

 

Further, as the Application was filed submitted unsigned, the Examining Attorney requested a statement attesting to the facts set forth in the Application.  Accordingly, Applicant submits herewith a signed copy of the Declaration.

 

The Examining Attorney also inquired if Applicant intends to rely on its bona fide intent to use the mark in the United States, with the claim of priority from the corresponding Community Trademark application and a Section 44(e).  In addition, Applicant wishes to delete the intent to use basis. Attached is a copy of the foreign registration certificate to perfect the Section 44(e) basis. 

 

Applicant notes that a search of the U.S. Patent and Trademark Office records did not reveal any pending or registered mark which would bar registration under Section 2(d) of the Trademark Act.

 

Applicant submits it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned at Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth floor, Irvine, California 92614.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Gymnastic and sporting articles not included in other classes; surfboards, paddleboards and accessories therefor, including sails, sail battens, tensioning apparatus for masts, mast feet, booms, fins, fin cases, trapezes, surfboard leeboards, surfboard leashes, trapeze hooks, inflating pumps, trapeze lines, trapeze clips, paddles, transport bags for surfboard and paddleboards; moving floats, inflatable swimming floats, and inflatables floats for recreational use; surfboard and paddleboards bags
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 17911054 filed 05/31/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Gymnastic and sporting articles not included in other classes; Surfboards; surfboards, paddleboards and accessories therefor, including sails, sail battens, tensioning apparatus for masts, mast feet, booms, fins, fin cases, trapezes, surfboard leeboards, surfboard leashes, trapeze hooks, inflating pumps, trapeze lines, trapeze clips, paddles, transport bags for surfboard and paddleboards; paddleboards; moving floats, inflatable swimming floats, and inflatables floats for recreational use; surfboard and paddleboard accessories therefor sold as a unit with the same, namely, sails, sail battens being flexible non-metal sail inserts to improve sail effectiveness; masts, and booms for surfboard and paddle boards, and masts and booms tension handling systems comprising lines and fittings, all sold as a unit; mast platform feet specially adapted for surfboard and paddleboard mast platforms; paddleboard and surfboard accessories, namely, fins, fin cases, specially-adapted leeboards, leashes, paddles, specially-adapted transport bags; trapezes for surfboard and paddleboards, being harnesses specially-adapted for windsurfing activities, and hooks, lines, and clips therefor, sold as a unit; , inflatable floats for recreational use, namely, inflatable swimming, and paddleboarding, and surfing floats; surfboard and paddleboards bagsClass 028 for Surfboards; paddleboards; surfboard and paddleboard accessories therefor sold as a unit with the same, namely, sails, sail battens being flexible non-metal sail inserts to improve sail effectiveness; masts, and booms for surfboard and paddle boards, and masts and booms tension handling systems comprising lines and fittings, all sold as a unit; mast platform feet specially adapted for surfboard and paddleboard mast platforms; paddleboard and surfboard accessories, namely, fins, fin cases, specially-adapted leeboards, leashes, paddles, specially-adapted transport bags; trapezes for surfboard and paddleboards, being harnesses specially-adapted for windsurfing activities, and hooks, lines, and clips therefor, sold as a unit;, inflatable floats for recreational use, namely, inflatable swimming, and paddleboarding, and surfing floats; surfboard and paddleboards bags
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 17911054 filed 05/31/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 17911054 registered 11/20/2018 with a renewal date of __________ and an expiration date of 05/31/2028 ], 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:
FRU0-1732271968-132737648_._EU_registration_certificate.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1732271968-132737648_._003_dec.PDF
Converted PDF file(s) (4 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signatory's Name: P. Hawthorne
Signatory's Position: Head of Design

Response Signature
Signature: /Stacey R. Halpern/     Date: 02/07/2019
Signatory's Name: Stacey Halpern
Signatory's Position: Attorney for Applicant, California bar member

Signatory's Phone Number: 949-760-0404

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: 88104274
Internet Transmission Date: Thu Feb 07 15:40:31 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019020715403150
2146-88104274-62053c3a982169a1f8628445c1
ebd9b8cbc587ce594cdcdfdde8b33e9282f2e2db
-N/A-N/A-20190207132737648495