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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88216187 |
LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88216187/mark.png |
LITERAL ELEMENT |
ADIDAS |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the word "adidas" in a stylized font. |
ARGUMENT(S) |
Please see the actual argument text attached within the Evidence section. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_68170148130-20190724124100339497_._J287-1427-ROA-SN_88216187.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\161\88216187\xml5\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\161\88216187\xml5\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\161\88216187\xml5\ROA0004.JPG |
DESCRIPTION OF EVIDENCE FILE |
Response |
GOODS AND/OR SERVICES SECTION (001)(current) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
Waterproofing chemical compositions, leather-waterproofing chemicals |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 06/00/2016 |
FIRST USE IN COMMERCE DATE |
At least as early as 06/00/2016 |
GOODS AND/OR SERVICES SECTION (001)(proposed) |
INTERNATIONAL CLASS |
001 |
TRACKED TEXT DESCRIPTION |
Waterproofing chemical compositions, leather-waterproofing chemicals; Waterproofing chemical compositions, and leather-waterproofing chemicals |
FINAL DESCRIPTION |
Waterproofing chemical compositions, and leather-waterproofing chemicals |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 06/00/2016 |
FIRST USE IN COMMERCE DATE |
At least as early as 06/00/2016 |
GOODS AND/OR SERVICES SECTION (003)(current) |
INTERNATIONAL CLASS |
003 |
DESCRIPTION |
Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, suede cleaning preparations, suede
conditioning preparations, shoe polishes, cleaning sponges sold with shoe cleaning and conditioning preparations, shoe brushes sold with shoe cleaning and conditioning preparations |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 06/00/2016 |
FIRST USE IN COMMERCE DATE |
At least as early as 06/00/2016 |
GOODS AND/OR SERVICES SECTION (003)(proposed) |
INTERNATIONAL CLASS |
003 |
TRACKED TEXT DESCRIPTION |
Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, suede
cleaning preparations, suede conditioning preparations, shoe polishes, cleaning sponges sold with shoe cleaning and conditioning preparations, shoe brushes sold with shoe cleaning and conditioning
preparations; Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, namely, creams for leather and waxes for leather,
suede cleaning preparations, suede conditioning preparations, namely, creams for suede and waxes for suede, shoe polishes, cleaning sponges, shoe cleaning preparations, and shoe conditioning
preparations in the nature of shoe wax and shoe cream all sold as a unit, and shoe brushes, shoe cleaning preparations and conditioning preparations in the nature of shoe wax and shoe cream all sold
as a unit |
FINAL DESCRIPTION |
Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, namely, creams for leather and waxes for
leather, suede cleaning preparations, suede conditioning preparations, namely, creams for suede and waxes for suede, shoe polishes, cleaning sponges, shoe cleaning preparations, and shoe conditioning
preparations in the nature of shoe wax and shoe cream all sold as a unit, and shoe brushes, shoe cleaning preparations and conditioning preparations in the nature of shoe wax and shoe cream all sold
as a unit |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 06/00/2016 |
FIRST USE IN COMMERCE DATE |
At least as early as 06/00/2016 |
GOODS AND/OR SERVICES SECTION (005)(no change) |
GOODS AND/OR SERVICES SECTION (021)(class added) |
INTERNATIONAL CLASS |
021 |
DESCRIPTION |
Cleaning sponges sold in connection with shoe cleaning and conditioning preparations, and shoe brushes sold in connection with shoe
cleaning and conditioning preparations |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 06/00/2016 |
FIRST USE IN COMMERCE DATE |
At least as early as 06/00/2016 |
STATEMENT TYPE |
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in
commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b)
Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an
illegible specimen]. |
SPECIMEN
FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\882\161\88216187\xml5\ ROA0005.JPG |
ADDITIONAL STATEMENTS SECTION |
ACTIVE PRIOR REGISTRATION(S) |
The applicant claims ownership of active prior U.S. Registration Number(s) 4351977. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/J287-1488-PB-as/ |
SIGNATORY'S NAME |
Peter Bucci |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
8453597700 |
DATE SIGNED |
07/24/2019 |
RESPONSE SIGNATURE |
/J287-1488-PB-as/ |
SIGNATORY'S NAME |
Peter Bucci |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
8453597700 |
DATE SIGNED |
07/24/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Jul 24 13:02:03 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XXX-
20190724130203940841-8821
6187-62095272fd2f088e39e1
4e8a5804e815ceaa22ce5fb4c
7d2db693726c7c8ebe2-CC-12
765-20190724124100339497 |
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.
88216187 ADIDAS (Stylized and/or with Design, see http://uspto.report/TM/88216187/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Please see the actual argument text attached within the Evidence section.
EVIDENCE
Evidence in the nature of Response has been attached.
Original PDF file:
evi_68170148130-20190724124100339497_._J287-1427-ROA-SN_88216187.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Waterproofing chemical compositions, leather-waterproofing chemicals
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, 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
application filing date.
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. The mark was first used at least as early as 06/00/2016
and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Waterproofing chemical compositions, leather-waterproofing chemicals;
Waterproofing chemical
compositions, and leather-waterproofing chemicalsClass 001 for Waterproofing chemical compositions, and leather-waterproofing chemicals
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, 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
application filing date.
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. The mark was first used at least as early as 06/00/2016
and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, suede cleaning preparations, suede conditioning preparations, shoe
polishes, cleaning sponges sold with shoe cleaning and conditioning preparations, shoe brushes sold with shoe cleaning and conditioning preparations
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, 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
application filing date.
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. The mark was first used at least as early as 06/00/2016
and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, suede cleaning preparations, suede
conditioning preparations, shoe polishes, cleaning sponges sold with shoe cleaning and conditioning preparations, shoe brushes sold with shoe cleaning and conditioning preparations;
Shoe cleaning preparations, leather cleaning preparations, leather conditioning preparations, namely, creams for leather and waxes for leather, suede cleaning preparations, suede
conditioning preparations, namely, creams for suede and waxes for suede, shoe polishes, cleaning sponges, shoe cleaning preparations, and shoe conditioning preparations in the nature of shoe wax and
shoe cream all sold as a unit, and shoe brushes, shoe cleaning preparations and conditioning preparations in the nature of shoe wax and shoe cream all sold as a unitClass 003 for Shoe cleaning
preparations, leather cleaning preparations, leather conditioning preparations, namely, creams for leather and waxes for leather, suede cleaning preparations, suede conditioning preparations, namely,
creams for suede and waxes for suede, shoe polishes, cleaning sponges, shoe cleaning preparations, and shoe conditioning preparations in the nature of shoe wax and shoe cream all sold as a unit, and
shoe brushes, shoe cleaning preparations and conditioning preparations in the nature of shoe wax and shoe cream all sold as a unit
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, 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
application filing date.
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. The mark was first used at least as early as 06/00/2016
and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 021 for Cleaning sponges sold in connection with shoe cleaning and conditioning preparations, and shoe brushes sold in connection with shoe cleaning and conditioning
preparations
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, 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
application filing date.
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. The mark was first used at least as early as 06/00/2016
and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 021 .
"
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based
on Section 1(a), Use in Commerce] OR "
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to
Allege Use or expiration of the filing deadline for filing a Statement of Use"
[for an application based on Section 1(b) Intent-to-Use].
OR "The attached specimen is a true copy
of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4351977.
FEE(S)
Fee(s) in the amount of $275 is being submitted.
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: /J287-1488-PB-as/ Date: 07/24/2019
Signatory's Name: Peter Bucci
Signatory's Position: Attorney of Record
Signatory's Phone Number: 8453597700
Response Signature
Signature: /J287-1488-PB-as/ Date: 07/24/2019
Signatory's Name: Peter Bucci
Signatory's Position: Attorney of Record
Signatory's Phone Number: 8453597700
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
RAM Sale Number: 88216187
RAM Accounting Date: 07/24/2019
Serial Number: 88216187
Internet Transmission Date: Wed Jul 24 13:02:03 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201907241302039
40841-88216187-62095272fd2f088e39e14e8a5
804e815ceaa22ce5fb4c7d2db693726c7c8ebe2-
CC-12765-20190724124100339497