NOTE TO THE FILE
SERIAL NUMBER: 88109546
DATE: 06/06/2019
NAME: jwilliston
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone re: filing divisional application Left message with
email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER: received email from applicant
From: Ryan Koroknay <ryank@lymanboat.com>
Sent: Thursday, June 6, 2019 9:37 PM
To: Fiorelli, Joanna <Joanna.Fiorelli@USPTO.GOV>; Williston, Jennifer <Jennifer.Williston@USPTO.GOV>
Subject: Response to Office Action serial # 88109546
Hi Joanna and Jennifer,
I submitted the attached Response to Office Action on June 5 for my LYMAN application serial # 88109546. However, in discussing my situation further with Jennifer over the phone on June 6, I believe I have made a mistake.
1) My original application Identification of Goods and Services reads:
Providing educational and entertainment services, namely, presentations, seminars, consultations, exhibitions, historical documentation, museum tours, and online websites, forums, and social media accounts related to boats, boating, and boating enthusiasts; providing boating club services, namely, events, rendezvous, boat shows, and online websites, forums, and social media accounts related to boats, boating, and boating enthusiasts. FIRST USE: 19920801. FIRST USE IN COMMERCE: 19920801
2) In the attached Response to Office Action, I amended the Identification of Goods and Services, specifically for education and entertainment services to read:
Providing educational and entertainment services, namely, presentations, seminars, exhibitions, guided museum tours, and in-person forums related to boats, boating, and boating enthusiasts.
3) In the Response to Office Action, I also made a claim of acquired distinctiveness based on 5 years use of the above educational and entertainment services.
4) I intend to split this class 41 application and proceed with registering the educational and entrainment services portion based on my claim of acquired distinctiveness related to 5 years of use.
5) However, I believe I made a mistake in my Response to Office Action by deleting the portion related to boating club services. I cannot make a claim of acquired distinctiveness based on 5 years use related to the boating club services because the date of first use is 20180628 (which is different than the date of first use for the educational and entertainment services date of first use of 19920801). I therefore deleted the boating club services portion from my Response to Office Action. However, I DO want to proceed with registering the boating club services portion of my application.
6) I intend to divide my original application into a parent application (educational and entertainments services) and a child application (boating club services)…..as Joanna recommended. However, I have not submitted the Request to Divide Application form yet.
Parent Application: Providing educational and entertainment services, namely, presentations, seminars, exhibitions, guided museum tours, and in-person forums related to boats, boating, and boating enthusiasts.
FIRST USE: 19920801. FIRST USE IN COMMERCE: 19920801
Child Application: Providing boating club services, namely, events in the nature of arranging social entertainment rendezvous events and boat exhibitions related to boats, boating, and boating enthusiasts.
FIRST USE: 20180626. FIRST USE IN COMMERCE: 20180626
7) I also believe I can make a claim of acquired distinctiveness for the boating club services based on our other prior trademark registrations 5200311 - boats; 2902748 - structural boat parts; 2902748 - clothing; 5682470 - beer.
There are many examples of boat manufacturing/repair/restoration companies that have related boat clubs.
8) Do you need me to submit a second / “revised” Response to Office Action with the boating club services included back into the Identification of Goods and Services along with the educational and entertainment services…and then I can submit a Request to Divide Application Form?
Thank you so much for the help and guidance, I certainly appreciate it.
Ryan
Ryan Koroknay
Lyman Boats LLC
(419) 566-0608
www.lymanboat.com