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. 88109546 LYMAN(Standard Characters, see http://uspto.report/TM/88109546/mark.png) has been amended as follows:

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

U.S. Trademark application serial number:?88109546 In an Office Action dated December 11, 2018, the Examining Attorney raised the following issues: 1) Section 2(e)(4) Refusal ? Primarily Merely a Surname 2) Advisory: Claim of Acquired Distinctiveness ? Section 2(f) 3) Identification and Classification of Services 4) Advisory: Multiple Class Applications In response, Applicant submits the following: 1-2) Surname Refusal and Acquired Distinctiveness Statement: The Examining Attorney refused registration of the applied-for mark because the mark is primarily merely a surname. Without acquiescing to the merits of the refusal and in the sole interest of furthering prosecution towards a Notice of Allowance, Applicant hereby amends this application to a Section 2(f) application based on five years use. Applicant hereby submits the following claim of acquired distinctiveness: The mark has become distinctive of the goods and/or 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. 3) Identification and Classification of Services: The Examining Attorney has indicated that that the identification of services is indefinite and must be clarified. In response, Applicant has elected class 41 and amended the description of services for class 41 to adopt the identification proposed by the Examining Attorney. The amendment to the description of goods/services is as follows: Providing educational and entertainment services, namely, presentations, seminars, exhibitions,?guided museum tours, and in-person forums related to boats, boating, and boating enthusiasts. 4) Applicant does not wish to pursue registration of services within the following classifications: Class 35: Providing purchase advisory and consulting services to consumers for the purchase of boats; online retail store services featuring boats; Class 37: Boat maintenance and repair consultation services; providing online websites that feature information about boat maintenance and repair service; Class 39: Archival services, namely, collection and storage of historical records and documents related to boats, boating, and boating enthusiasts; providing online websites featuring information in the field of boat transportation, and Class 45 Online social networking services related to boats, boating and boating enthusiasts. Accordingly, Applicant hereby deletes the description of these services from the identification of goods and services. Since the description of goods and services has been amended in accordance with the Examining Attorney?s recommendation, Applicant respectfully requests that the rejection of the Identification and Classification of Services be withdrawn. Conclusion: Having thus responded to all outstanding issues raised in the Office Action, Applicant respectfully requests that Application No. 88109546 be approved.

EVIDENCE

Original PDF file:
evi_74139242123-20190605200248933351_._Response_to_Office_Action_Serial__88109546.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/1992 and first used in commerce at least as early as 08/01/1992 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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 educational and entertainment services, namely, presentations, seminars, exhibitions, guided museum tours, and in-person forums 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 enthusiastsClass 041 for Providing educational and entertainment services, namely, presentations, seminars, exhibitions, guided museum tours, and in-person forums related to boats, boating, and boating enthusiasts.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/1992 and first used in commerce at least as early as 08/01/1992 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2578365, 2902748, 5200311, and others.


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

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: /Ryan Koroknay/      Date: 06/05/2019
Signatory's Name: Ryan Koroknay
Signatory's Position: General Partner

Response Signature
Signature: /Ryan Koroknay/     Date: 06/05/2019
Signatory's Name: Ryan Koroknay
Signatory's Position: General Partner

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88109546
Internet Transmission Date: Wed Jun 05 20:50:09 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201906052050095
36893-88109546-620bba501490cc8e81ac9e2ac
5bc97eaaf97868da1405c8acb33694c6f39849-N
/A-N/A-20190605200248933351