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. 88127006 HEMMINGS(Standard Characters, see http://uspto.report/TM/88127006/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of arguments and exhibits in support of the application has been attached.
Original PDF file:
evi_962249278-20191128105005397982_._OA_Response_Hemmings.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_962249278-20191128105005397982_._Hemmings_Exhibits.pdf
Converted PDF file(s) ( 26 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Arranging and conducting of auction sales; advertising and marketing services; Providing venues in the nature of trade exhibition facilities to showcase, sell and display the goods of others, namely, automobiles; Providing consumer product information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories, automotive events in the nature of tradeshows, exhibits and auctions; arranging, organizing and conducting events relating to motor vehicles, namely, tradeshows, auctions, exhibits
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: Arranging and conducting of auction sales; advertising and marketing services; Providing venues in the nature of trade exhibition facilities to showcase, sell and display the goods of others, namely, automobiles; Providing consumer product information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories, automotive events in the nature of tradeshows, exhibits and auctions; Providing consumer product information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories; arranging, organizing and conducting events relating to motor vehicles, namely, tradeshows, auctions, exhibits; automotive events in the nature of tradeshows and auctions; arranging, organizing and conducting events relating to motor vehicles, namely, tradeshows and auctionsClass 035 for Arranging and conducting of auction sales; advertising and marketing services; Providing venues in the nature of trade exhibition facilities to showcase, sell and display the goods of others, namely, automobiles; Providing consumer product information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories; automotive events in the nature of tradeshows and auctions; arranging, organizing and conducting events relating to motor vehicles, namely, tradeshows and auctions
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 041 for Providing current event information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories, and automotive events in the nature of automobile races, exhibits, auctions, tradeshows; arranging, organizing and conducting events relating to motor vehicles, namely, automobile races, exhibits, auctions, tradeshows; providing venues in the nature of museum facilities to showcase and display the goods of others, namely, automobiles
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: Providing current event information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories, and automotive events in the nature of automobile races, exhibits, auctions, tradeshows; Providing current event information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories; arranging, organizing and conducting events relating to motor vehicles, namely, automobile races, exhibits, auctions, tradeshows; automotive events in the nature of automobile races; arranging, organizing and conducting events relating to motor vehicles, namely, automobile races; providing venues in the nature of museum facilities to showcase and display the goods of others, namely, automobilesClass 041 for Providing current event information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories; automotive events in the nature of automobile races; arranging, organizing and conducting events relating to motor vehicles, namely, automobile races; providing venues in the nature of museum facilities to showcase and display the goods of others, namely, automobiles
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: Eric E. Gisolfi. Eric E. Gisolfi of ADVANCE, is located at

      One World Trade Center
      New York, New York 10007
      US

The phone number is 212-286-8246.

The fax number is 212-381-7200.

The email address is egisolfi@advance.com

The applicants proposed attorney information: Eric E. Gisolfi. Other appointed attorneys are Natasa Colovic. Eric E. Gisolfi of Advance, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      One World Trade Center
      One World Trade Center
      New York, New York 10007
      United States

The phone number is 212-286-8246.

The fax number is 212-381-7200.

The email address is trademarks@advance.com

Eric E. Gisolfi 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: Eric E. Gisolfi. Eric E. Gisolfi of ADVANCE, is located at

      One World Trade Center
      New York, New York 10007
      US

The phone number is 212-286-8246.

The fax number is 212-381-7200.

The email address is trademarks@advance.com; egisolfi@advance.com; ncolovic@advance.com

The applicants proposed correspondence information: Eric E. Gisolfi. Eric E. Gisolfi of Advance, is located at

      One World Trade Center
      One World Trade Center
      New York, New York 10007
      United States

The phone number is 212-286-8246.

The fax number is 212-381-7200.

The email address is trademarks@advance.com; egisolfi@advance.com; ncolovic@advance.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4450202, 4446539, 4446537, and others.


SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.

Original PDF file:
e2f-962249278-105005397_._Hemmings_Exhibits.pdf
Converted PDF file(s) ( 26 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20
2(f) evidence-21
2(f) evidence-22
2(f) evidence-23
2(f) evidence-24
2(f) evidence-25
2(f) evidence-26

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: /Natasa Colovic/      Date: 11/28/2019
Signatory's Name: Natasa Colovic
Signatory's Position: Attorney of record, NY Bar Member
Signatory's Phone Number: 2122868310


Response Signature
Signature: /Natasa Colovic/     Date: 11/28/2019
Signatory's Name: Natasa Colovic
Signatory's Position: Attorney of record, NY Bar member

Signatory's Phone Number: 2122868310

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:    Eric E. Gisolfi
   ADVANCE
   
   One World Trade Center
   New York, New York 10007
Mailing Address:    Eric E. Gisolfi
   Advance
   One World Trade Center
   One World Trade Center
   New York, New York 10007
        
Serial Number: 88127006
Internet Transmission Date: Thu Nov 28 11:04:47 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191128110447698
994-88127006-700517bf15af964d5aa86b2d578
e3af2b563c08cc68097fb6127e1fdf2f4428e4-N
/A-N/A-20191128105005397982