| 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) |
|
|
|
|---|---|
| SERIAL NUMBER | 88176837 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | https://tmng-al.uspto.gov/resting2/api/img/88176837/large |
| LITERAL ELEMENT | MATHIS PREMIUM |
| 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. |
| ARGUMENT(S) | |
| The Office Action mailed January 29, 2019, has been reviewed. In view of the following remarks and the amendments submitted herewith, it is respectfully submitted that Applicant's mark is entitled to be published for opposition. The Examiner refused registration under 15 U.S.C. Sec. 1052(e)(4) asserting that "Mathis" is primarily merely a surname. As indicated in the original application, the mark MATHIS is the subject of U.S. Trademark Registration No. 4,328,994. The present application has been amended to seek registration under Section 2(f) based on this prior registration. Accordingly, the Section 2(e)(4) refusal is obviated. Applicant's attorney would welcome the opportunity to discuss this case with the Examiner in the event that there are questions or comments concerning this amendment or the application to which it pertains. This is intended to be a complete response to the Office action mailed January 28, 2019. | |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | MATHIS has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4,328,994 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Mary M. Lee/ |
| SIGNATORY'S NAME | Mary M. Lee |
| SIGNATORY'S POSITION | Attorney of record, Oklahoma Bar member |
| SIGNATORY'S PHONE NUMBER | 4052854490 |
| DATE SIGNED | 01/31/2019 |
| RESPONSE SIGNATURE | /Mary M. Lee/ |
| SIGNATORY'S NAME | Mary M. Lee |
| SIGNATORY'S POSITION | Attorney of Record, Oklahoma Bar member |
| SIGNATORY'S PHONE NUMBER | 4052854490 |
| DATE SIGNED | 01/31/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 31 12:06:31 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0190131120631138649-88176 837-62069146ec25644525969 d1823e03b5d9e42e5308c4b6f e9fb9a9d15fa98f7724-N/A-N /A-20190131115342409333 |
| 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.