| 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 | 88205095 |
| LAW OFFICE ASSIGNED | LAW OFFICE 123 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88205095/mark.png |
| LITERAL ELEMENT | AMERICAS |
| 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) | |
|
SECTION 2(E)(2) REFUSAL—PRIMARILLY GEOGRAPHICALLY DESCRIPTIVE The Examining Attorney has refused the mark on the basis that it is primarily descriptive of the generally known geographic place of the Americas. As noted below, Applicant is amending the application herein to seek registration under §2(f) discussed below. The undersigned believes that this refusal is overcome by the amendment, thus rendering the refusal moot. ADDITIONAL INFORMATION REQUIRED The Examining Attorney has required that Applicant provide a written statement specifying where the services come from or originate. Applicant asserts that the services come from or originate in Florida.
ASSERTION OF §2(f) CLAIM OF DISTINCTIVENESS Under 15 U.S.C. 1052(f) (“Section 2(f)”), a registration for a mark is allowed for a mark used by the applicant which has become distinctive of the applicant's goods or services in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. In the instant case, with regard to the mark allegedly being merely descriptive of the services, Applicant has converted the application to one seeking registration under Section 2(f) on the basis of the mark having been substantially exclusively and continuously used for the recited goods since at least as early as 1993. It is respectfully submitted that this usage on a specific real estate brokerage services for a period of over twenty years not only satisfies the five-year requirement of Section 2(f), but also clearly establishes acquired distinctiveness of the mark if, in fact, it was, at some point, deemed to be geographically descriptive. Withdrawal of this ground for rejection is respectfully requested.
CONCLUSION In view of the above, Applicant respectfully requests withdrawal of the refusal and approval of the application for publication. In the event that further prosecution is needed and can be accomplished via a telephone conference, the Examining Attorney is encouraged to contact Applicant’s attorney, Thomas D. Bratschun at 303-268-0066. |
|
| ADDITIONAL STATEMENTS SECTION | |
| 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. |
| ATTORNEY SECTION (current) | |
| NAME | Thomas D. Bratschun |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | ADSERO IP |
| STREET | 8210 SOUTHPARK TERRACE |
| CITY | LITTLETON |
| STATE | Colorado |
| POSTAL CODE | 80120 |
| COUNTRY | US |
| PHONE | 303-268-0066 |
| FAX | 303-268-0065 |
| efs@adseroip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1095.001-TM |
| ATTORNEY SECTION (proposed) | |
| NAME | Thomas D. Bratschun |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | ADSERO IP |
| STREET | 8210 SOUTHPARK TERRACE |
| CITY | LITTLETON |
| STATE | Colorado |
| POSTAL CODE | 80120 |
| COUNTRY | United States |
| PHONE | 303-268-0066 |
| FAX | 303-268-0065 |
| efs@adseroip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1095.001-TM |
| OTHER APPOINTED ATTORNEY | Barry J. Swanson, James L. Brown, Chad E. King, Rosemary P. Kellogg, Katherine Lobel-Rice, Tony Sanny, Eric Cheong, Daniel S. Young, Ian L. Saffer, Sarah Cassinis, Ken Chang, Francis Kiwon Yi, Amy Hsiao and Kent Dallow |
| CORRESPONDENCE SECTION (current) | |
| NAME | THOMAS D. BRATSCHUN |
| FIRM NAME | ADSERO IP |
| STREET | 8210 SOUTHPARK TERRACE |
| CITY | LITTLETON |
| STATE | Colorado |
| POSTAL CODE | 80120 |
| COUNTRY | US |
| PHONE | 303-268-0066 |
| FAX | 303-268-0065 |
| efs@adseroip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1095.001-TM |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Thomas D. Bratschun |
| FIRM NAME | ADSERO IP |
| STREET | 8210 SOUTHPARK TERRACE |
| CITY | LITTLETON |
| STATE | Colorado |
| POSTAL CODE | 80120 |
| COUNTRY | United States |
| PHONE | 303-268-0066 |
| FAX | 303-268-0065 |
| efs@adseroip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1095.001-TM |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Alexander Bernaldo/ |
| SIGNATORY'S NAME | Alexander Bernaldo |
| SIGNATORY'S POSITION | President |
| SIGNATORY'S PHONE NUMBER | 305-883-1921 |
| DATE SIGNED | 09/05/2019 |
| RESPONSE SIGNATURE | /TD Bratschun/ |
| SIGNATORY'S NAME | Thomas Bratschun |
| SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
| SIGNATORY'S PHONE NUMBER | 3036011421 |
| DATE SIGNED | 09/05/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Sep 05 16:14:01 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190905161401354247-8820 5095-6102ae4793fb8a2da046 35d31697f21330bd12e8b6409 f249214ec447eac4a244-N/A- N/A-20190904163102428697 |
| 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) |
SECTION 2(E)(2) REFUSAL—PRIMARILLY GEOGRAPHICALLY DESCRIPTIVE
The Examining Attorney has refused the mark on the basis that it is primarily descriptive of the generally known geographic place of the Americas. As noted below, Applicant is amending the application herein to seek registration under §2(f) discussed below.
The undersigned believes that this refusal is overcome by the amendment, thus rendering the refusal moot.
ADDITIONAL INFORMATION REQUIRED
The Examining Attorney has required that Applicant provide a written statement specifying where the services come from or originate. Applicant asserts that the services come from or originate in Florida.
ASSERTION OF §2(f) CLAIM OF DISTINCTIVENESS
Under 15 U.S.C. 1052(f) (“Section 2(f)”), a registration for a mark is allowed for a mark used by the applicant which has become distinctive of the applicant's goods or services in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.
In the instant case, with regard to the mark allegedly being merely descriptive of the services, Applicant has converted the application to one seeking registration under Section 2(f) on the basis of the mark having been substantially exclusively and continuously used for the recited goods since at least as early as 1993. It is respectfully submitted that this usage on a specific real estate brokerage services for a period of over twenty years not only satisfies the five-year requirement of Section 2(f), but also clearly establishes acquired distinctiveness of the mark if, in fact, it was, at some point, deemed to be geographically descriptive. Withdrawal of this ground for rejection is respectfully requested.
CONCLUSION
In view of the above, Applicant respectfully requests withdrawal of the refusal and approval of the application for publication. In the event that further prosecution is needed and can be accomplished via a telephone conference, the Examining Attorney is encouraged to contact Applicant’s attorney, Thomas D. Bratschun at 303-268-0066.
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.