| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88144524 |
| LAW OFFICE ASSIGNED | LAW OFFICE 120 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88144524/mark.png |
| LITERAL ELEMENT | GATES |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | Gates Corporation |
| STREET | 1144 15th Street |
| CITY | Denver |
| STATE | Colorado |
| ZIP/POSTAL CODE | 80202 |
| COUNTRY | United States |
| OWNER SECTION (proposed) | |
| NAME | Gates Corporation |
| INTERNAL ADDRESS | Suite 1400 |
| STREET | 1144 15th Street |
| CITY | Denver |
| STATE | Colorado |
| ZIP/POSTAL CODE | 80202 |
| COUNTRY | United States |
| PHONE | 303-744-4743 |
| FAX | 303-744-5060 |
| XXXX | |
| AUTHORIZED TO COMMUNICATE VIA E-MAIL | Yes |
| ARGUMENT(S) | |
| The Examiner refused the pending application under Section 2(e)(4) as primarily merely a surname. The Examiner offers 77,805 examples of the use of "Gates" as a surname. The Examiner correctly notes the Applicant's founder was named Charles Gates. The Company has carried the Gates name since its founding in 1911. In those 108 years the "Gates" mark has become highly distinctive of the Company's goods and services many times over. Applicant agrees with and appreciates the Examiner's observation that Applicant has used its mark for a long time. This can be demonstrated in part from the Company's website cited by the Examiner, www.gates.com, as well as prior US trademark registrations. In those 108 years Applicant has registered multiple word and device marks for "Gates", both in the US and worldwide. The "Gates" mark is well known outside the US as it is well known in the US. For example, a "Gates" mark registered in China (Reg No 1030762; Gates in Oval) has achieved good fame through long use and publicity in China according to the China Trademark Office (Favorable Decision on Opposition against Trademark Application No. 13307820). In support of allowance of the pending application: A. Pursuant to 37 CFR 2.41(a)(1) Applicant submits prior US registrations owned by the Applicant on the Principal Register of the same mark for goods and services that are sufficiently similar to those identified in the pending application: GATES OVAL 3,673,096 GATES PRINT 3,462,626 GATES OVAL 1,027,196 GATES OVAL 1,541,247 GATES PRINT 1,146,606 GATES OVAL 821,456 GATES OVAL 549,898 GATES OVAL 424,054 B. Pursuant to 37 CFR 2.41(a)(2) Applicant amends the application to assert a claim of acquired distinctiveness under Section 2(f) as follows: The mark has become distinctive of the goods and services through applicant's substantially exclusive and continuous use of the mark in commerce that the US Congress may lawfully regulate for at least five years immediately before the date of this statement. | |
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of active prior U.S. Registration Number(s) 3673096, 3462626, 1027196, 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. |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | JEFFREY A. THURNAU GATES CORPORATION 1144 15TH STREET DENVER Colorado US 80202 |
| NEW CORRESPONDENCE SECTION | |
| NAME | JEFFREY A. THURNAU |
| FIRM NAME | GATES CORPORATION |
| DOCKET/REFERENCE NUMBER | 8604 |
| INTERNAL ADDRESS | Suite 1400 |
| STREET | 1144 15TH STREET |
| CITY | DENVER |
| STATE | Colorado |
| ZIP/POSTAL CODE | 80202 |
| COUNTRY | United States |
| PHONE | 303-744-4743 |
| FAX | (303) 744-5060 |
| jt4006@gates.com;eh1806@gates.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /jeffrey thurnau/ |
| SIGNATORY'S NAME | Jeffrey Thurnau |
| SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
| SIGNATORY'S PHONE NUMBER | 303-744-4743 |
| DATE SIGNED | 06/21/2019 |
| RESPONSE SIGNATURE | /jeffrey thurnau/ |
| SIGNATORY'S NAME | Jeffrey Thurnau |
| SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
| SIGNATORY'S PHONE NUMBER | 303-744-4743 |
| DATE SIGNED | 06/21/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 21 12:45:55 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190621124555307580-8814 4524-62072b6483dddef3ef2a fc0f2cbdf93cf13115a4cae88 e52e58a64a8f9c7a9ef30-N/A -N/A-20190607164303639285 |
| 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) |
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.