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. 88211373 GAMMA(Standard Characters, see http://uspto.report/TM/88211373/mark.png) has been amended as follows:

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

Applicant has prepared and submitted arguments against the refusal and in favor of registration in the Evidence section.  The response to office action is marked as ROA_GAMMA_148961527_2.

EVIDENCE
Evidence in the nature of Applicant's ROA and supporting evidence in Exhibits A-D. has been attached.
Original PDF file:
evi_1744721010-20190828183232622639_._ROA_GAMMA_148961527_2.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_1744721010-20190828183232622639_._Ex_A_GAMMA_ROA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1744721010-20190828183232622639_._Ex_B_GAMMA_ROA.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1744721010-20190828183232622639_._Ex_C_GAMMA_ROA.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1744721010-20190828183232622639_._Ex_D_GAMMA_ROA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Sailing vessels; sailboats; boats; masts for boats; booms for boats; rudders for boats; sailboats and structural parts therefor, namely, hulls and hull sections; hull fittings, namely, drain plugs, cleats, bailers, coamings, centerboards, keels and daggerboards; beams; booms; masts; rudders; tillers and tiller extensions; sailboat rigging and hardware, namely, rings, pins, halyards, sheets, stays, shrouds, spreaders, pulleys, blocks, lines, gudgeons, pintles, shackles, ratchets, bolts, nuts, screws, washers, bushings, grommets, eyes, hooks, hinges, furlings, bridles, trapezes; fitted and semi-fitted covers for boats, boat cockpits and rudder
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Sailing vessels; sailboats; sailboats and structural parts therefor, namely, hulls and hull sections; boats; hull fittings, namely, drain plugs, cleats, bailers, coamings, centerboards, keels and daggerboards; masts for boats; beams for sailboats; booms for boats; booms for sailboats; rudders for boats; masts for sailboats; rudders; sailboat tillers and sailboat tiller extensions; beams; sailboat rigging structures and component hardware parts thereof, namely, rings, pins, halyards, sheets, stays, shrouds, spreaders, pulleys, blocks, lines, gudgeons, pintles, shackles, ratchets, bolts, nuts, screws, washers, bushings, grommets, eyes, hooks, hinges, furlings, bridles, trapezes; booms; fitted and semi-fitted covers for sailboats and rudders, excluding boat tops.; masts; tillers and tiller extensions; sailboat rigging and hardware, namely, rings, pins, halyards, sheets, stays, shrouds, spreaders, pulleys, blocks, lines, gudgeons, pintles, shackles, ratchets, bolts, nuts, screws, washers, bushings, grommets, eyes, hooks, hinges, furlings, bridles, trapezes; fitted and semi-fitted covers for boats, boat cockpits and rudderClass 012 for sailboats; sailboats and structural parts therefor, namely, hulls and hull sections; hull fittings, namely, drain plugs, cleats, bailers, coamings, centerboards, keels and daggerboards; beams for sailboats; booms for sailboats; masts for sailboats; rudders; sailboat tillers and sailboat tiller extensions; sailboat rigging structures and component hardware parts thereof, namely, rings, pins, halyards, sheets, stays, shrouds, spreaders, pulleys, blocks, lines, gudgeons, pintles, shackles, ratchets, bolts, nuts, screws, washers, bushings, grommets, eyes, hooks, hinges, furlings, bridles, trapezes; fitted and semi-fitted covers for sailboats and rudders, excluding boat tops.
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 022 for sails; Sailboat sails; storage bags for boat spars and sailboats
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 022 for sails; Sailboat sails; storage bags for boat spars and sailboats
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Arranging, conducting and organizing sporting events and competitions in the sport of sailing; Entertainment in the nature of sailboat races; education in the nature of teaching of yachting, sailing, steering boats, ships or vessels; providing of training for groups and individuals relating to yachting, sailing, steering boats, ships or vessels; sporting and cultural activities, namely, organizing, sanctioning, conducting, regulating and governing amateur athletic programs and activities, namely, in connection with vehicles and apparatus for locomotion by sea; publication of books, magazines, journals, newspapers, periodicals, catalogues, and brochures in the field of sailing
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Arranging, conducting and organizing sporting events and competitions in the sport of sailing; Entertainment in the nature of sailboat races; education in the nature of teaching of yachting, sailing, steering boats, ships or vessels; education in the nature of teaching of sailing; providing of training for groups and individuals relating to yachting, sailing, steering boats, ships or vessels; providing of training for groups and individuals relating to sailing; sporting and cultural activities, namely, organizing, sanctioning, conducting, regulating and governing amateur athletic programs and activities, namely, in connection with vehicles and apparatus for locomotion by sea; sporting and cultural activities, namely, organizing, sanctioning, conducting, regulating and governing amateur athletic programs and activities, namely, in connection with sailing; publication of books, magazines, journals, newspapers, periodicals, catalogues, and brochures in the field of sailingClass 041 for Arranging, conducting and organizing sporting events and competitions in the sport of sailing; Entertainment in the nature of sailboat races; education in the nature of teaching of sailing; providing of training for groups and individuals relating to sailing; sporting and cultural activities, namely, organizing, sanctioning, conducting, regulating and governing amateur athletic programs and activities, namely, in connection with sailing; publication of books, magazines, journals, newspapers, periodicals, catalogues, and brochures in the field of sailing
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 075143 filed 06/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

The applicant's current attorney information: Katherine M. Basile and Jason E. Garcia. Katherine M. Basile and Jason E. Garcia of REED SMITH LLP, is located at

      P.O. BOX 488
      PITTSBURGH, Pennsylvania 15230
      US
The docket/reference number is 386157.00002.

The phone number is 650-352-0514.

The fax number is 650-352-0699.

The email address is ptoipinbox@reedsmith.com

The applicants proposed attorney information: Katherine M. Basile and Jason E. Garcia. Other appointed attorneys are Kate Geldmacher, Justine Lee, and other appointed attorneys at the firm. Katherine M. Basile and Jason E. Garcia of REED SMITH LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 488
      PITTSBURGH, Pennsylvania 15230
      United States
The docket/reference number is 386157.00002.

The phone number is 650-352-0507.

The fax number is 650-352-0699.

The email address is svtmdocket@reedsmith.com

Katherine M. Basile and Jason E. Garcia 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: KATHERINE M. BASILE AND JASON E. GARCIA. KATHERINE M. BASILE AND JASON E. GARCIA of REED SMITH LLP, is located at

      P.O. BOX 488
      PITTSBURGH, Pennsylvania 15230
      US
The docket/reference number is 386157.00002.

The phone number is 650-352-0514.

The fax number is 650-352-0699.

The email address is ptoipinbox@reedsmith.com; KBasile@reedsmith.com; JGarcia@ReedSmith.com; DCespedes@reedsmith.com; RLin@ReedSmith.com

The applicants proposed correspondence information: Katherine M. Basile and Jason E. Garcia. Katherine M. Basile and Jason E. Garcia of REED SMITH LLP, is located at

      P.O. BOX 488
      PITTSBURGH, Pennsylvania 15230
      United States
The docket/reference number is 386157.00002.

The phone number is 650-352-0507.

The fax number is 650-352-0699.

The email address is svtmdocket@reedsmith.com; kbasile@reedsmith.com; jgarcia@reedsmith.com; kgeldmacher@reedsmith.com; rlin@reedsmith.com

SIGNATURE(S)
Response Signature
Signature: /Jason E Garcia/     Date: 08/28/2019
Signatory's Name: Jason E. Garcia
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-352-0514

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:    KATHERINE M. BASILE AND JASON E. GARCIA
   REED SMITH LLP
   
   P.O. BOX 488
   PITTSBURGH, Pennsylvania 15230
Mailing Address:    Katherine M. Basile and Jason E. Garcia
   REED SMITH LLP
   P.O. BOX 488
   PITTSBURGH, Pennsylvania 15230
        
Serial Number: 88211373
Internet Transmission Date: Wed Aug 28 18:44:02 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019082818440284
0612-88211373-6106e6dd725222fb1d7a262560
cb3d88791d8b8ab8e3697203d96cff3b8f7bc95-
N/A-N/A-20190828183232622639