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. 88225026 DEWITT(Standard Characters, see http://uspto.report/TM/88225026/mark.png) has been amended as follows:

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

?2(e)(4) REFUSAL Applicant is a law firm founded in 1903, and has over 200 attorneys with offices in Wisconsin and Minnesota. Its practice extends domestically across the United States, and internationally as well. As noted in Applicant?s registration, Applicant claims ownership of prior registrations 4555335 (for DEWITT ROSS & STEVENS) and 4555348 (for DEWITT ROSS & STEVENS in stylized form), both registrations covering the same services as the present application, with these registrations listing first use of the DEWITT ROSS & STEVENS mark in 1995. Prior to 1995, Applicant operated under the mark DEWITT PORTER. The firm has long been known colloquially among the public and within the legal profession as merely DEWITT, and as of January 1, 2019, it formally reorganized as DeWitt, LLP, dropping ROSS & STEVENS from its legal name and advertising, to reflect this. (It is noted that Applicant has not yet recorded its certificate of conversion with the USPTO to update Applicant?s name to DeWitt, LLP in the present registration, but it is expected that Applicant will file for such recordation concurrently with, or soon after, this Response.) Owing to Applicant?s longstanding use of DEWITT, and longstanding recognition of Applicant as merely DEWITT, the ?2(f) claim provided herewith is respectfully submitted to obviate the ?2(e)(4) refusal. ?2(D) REFUSAL The ?2(d) refusal is applied to a portion of the Applicant?s class 35 services (?business acquisition and merger consultation, business planning?), and not to Applicant?s remaining class 35 services (?commercial lobbying services?), nor to Applicant?s class 45 legal services. The cited prior registration (4520056) encompasses ?provision of online business and commercial information; market research and analysis; compilation and preparation of statistical information; business data retrieval services, namely, market research and business intelligence services? in class 035. It is notable that Registrant?s services do not explicitly cover the ?business acquisition and merger consultation, business planning? services of Applicant; this is so because Registrant does not provide such services. As seen from the accompanying exhibits (from Registrant?s website), Registrant is an information and research provider, providing data and research on commodities (in particular petroleum, biofuels, metals, and fertilizers). It does not provide Applicant?s class 35 services in issue, nor would consumers expect it to do so, as it its simply an information provider. Moreover, it appears Registrant no longer provides services under the mark DEWITT; from Applicant?s research, Registrant Argus Media Limited ? which is a UK company -- acquired DeWitt & Company (a US firm which provided petrochemical information/research) in 2012, and while it used the DEWITT mark of its acquisition for a time, it began phasing out use of DEWITT in lieu of its ?core? brand ARGUS. DEWITT now only appears on Registrant?s website in discussions of its history, and does not appear in connection with the current provision of any of Registrant?s class 35 services. Withdrawal of the ?2(d) refusal is requested, as there is no likelihood of confusion. The ?2(e)(4) refusal recognizes that DEWITT, as a surname, lacks inherent distinctiveness, such that consumers would expect multiple sources of DEWITT goods/services. Given that, and the lack of overlap between Applicant?s and Registrant?s services, consumer confusion is unlikely. Withdrawal is also requested as per In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), as well as Morehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969). Strategic Partners allowed registration of substantially the same mark as one in a prior registration, for substantially the same goods, owing to longstanding coexistence of the marks. It stated that it "would conclude, under usual circumstances, that confusion is likely to occur" between the two marks at issue in that case, but found no likelihood of confusion in the "unusual situation" presented, because "applicant already owns a registration for a substantially similar mark for the identical goods," and "applicant's [prior] registration and the cited registration have coexisted for over five years." Id. at 1399. (This is the case here as well: Applicant?s prior registrations issued June 24, 2014; Registrant?s registration issued April 29, 2014.) Morehouse recognizes that where an applicant already owns an unchallenged registration for the same or substantially similar mark and goods or services (as here, where Applicant?s prior registrations cover the same services as the present application), the registrant cannot be injured by the registration sought. REQUEST FOR SUSPENSION (37 CFR ?2.67, TMEP 716 et seq.) TMEP 716.02 states that ?Under 37 C.F.R. ?2.67, an examining attorney has the discretion to suspend an application ?for good and sufficient cause.?? If the ?2(d) refusal is not withdrawn, the Examining Attorney is respectfully requested to exercise her discretion and suspend action on the present application through October 30, 2020, or at least through April 30, 2020, as there are believed to be good and sufficient reasons to do so: (1) The cited registration was registered on April 29, 2014, and thus is currently in its Section 8 "maintenance window": it has a Section 8 Declaration of Use due by April 29, 2020 (or by October 29, 2020, if the grace period fee is paid). (2) Applicant?s attorney of record has investigated the status of the prior mark DEWITT, as set forth in the cited registration, and was unable to find any current use of the mark in the United States. As discussed above, it appears registrant has phased out use of DEWITT in lieu of its primary brand ARGUS. It therefore appears that the registration is subject to cancellation on the ground of abandonment as per ?14(3) of the Lanham Act (15 USC ?1064(3)). (3) The Applicant has therefore considered the filing of a Petition for Cancellation against the prior registration for abandonment (and/or the filing of a Petition for Partial Cancellation under ?18 of the Lanham Act, 15 USC ?1068, seeking to restrict the registrant's class 35 goods/services to more precisely reflect registrant?s commodity- related services). However, such action incurs burdens and costs for the Applicant, the USPTO (more specifically, to the Trademark Trial and Appeal Board), and the registrant. Further, such action seems excessive, as it appears all ?2(d) issues will simply resolve with the passage of time, with no burdens or costs to the USPTO, the applicant, and the registrant. As per TMEP 716.02, the grant of suspension is discretionary on the part of the Examining Attorney, and TMEP 716.02(a)-(i) merely lists ?common reasons for suspension?; these are not exhaustive. No provisions prohibit suspension in the present circumstances. If the ?2(d) refusal is maintained, kindly suspend action, as suspension may resolve the ?2(d) issues without the need for the Applicant and the USPTO to expend further resources.

EVIDENCE
Evidence in the nature of Images from Registrant's website has been attached. Evidence-1
Evidence-2
Evidence-3
Evidence-4

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: DeWitt Ross & Stevens S.C., a corporation of Wisconsin, having an address of
      2 East Mifflin Street, Suite 600
      Madison, Wisconsin 53703
      United States

Proposed: DeWitt LLP, limited liability partnership legally organized under the laws of Wisconsin, having an address of
      2 East Mifflin Street, Suite 600
      Madison, Wisconsin 53703
      United States

The applicant's current attorney information: Craig A. Fieschko. Craig A. Fieschko of DEWITT ROSS & STEVENS S.C., is located at

      2 E. MIFFLIN STREET, SUITE 600
      MADISON, Wisconsin 53703-2865
      US
The docket/reference number is 35551042.

The phone number is 608-395-6722.

The fax number is 608-252-9243.

The email address is cftm@dewittross.com

The applicants proposed attorney information: Craig A. Fieschko. Other appointed attorneys are Joseph T. Leone, Charles S. Sara. Craig A. Fieschko of DeWitt 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

      2 E. Mifflin St. #600
      Madison, Wisconsin 53703-2865
      United States
The docket/reference number is 35551042.

The phone number is 608-395-6722.

The fax number is 608-252-9243.

The email address is cftm@dewittross.com

Craig A. Fieschko 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: CRAIG A. FIESCHKO. CRAIG A. FIESCHKO of DEWITT ROSS & STEVENS S.C., is located at

      2 E. MIFFLIN STREET, SUITE 600
      MADISON, Wisconsin 53703-2865
      US
The docket/reference number is 35551042.

The phone number is 608-395-6722.

The fax number is 608-252-9243.

The email address is cftm@dewittross.com

The applicants proposed correspondence information: Craig A. Fieschko. Craig A. Fieschko of DeWitt LLP, is located at

      2 E. Mifflin St. #600
      Madison, Wisconsin 53703-2865
      United States
The docket/reference number is 35551042.

The phone number is 608-395-6722.

The fax number is 608-252-9243.

The email address is cftm@dewittross.com

ADDITIONAL STATEMENTS
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.


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: /craigfieschko/      Date: 09/06/2019
Signatory's Name: Craig A. Fieschko
Signatory's Position: Attorney of Record
Signatory's Phone Number: 6083956722


Response Signature
Signature: /craigfieschko/     Date: 09/06/2019
Signatory's Name: Craig A. Fieschko
Signatory's Position: Attorney of Record

Signatory's Phone Number: 6083956722

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:    CRAIG A. FIESCHKO
   DEWITT ROSS & STEVENS S.C.
   
   2 E. MIFFLIN STREET, SUITE 600
   MADISON, Wisconsin 53703-2865
Mailing Address:    Craig A. Fieschko
   DeWitt LLP
   2 E. Mifflin St. #600
   Madison, Wisconsin 53703-2865
        
Serial Number: 88225026
Internet Transmission Date: Fri Sep 06 17:34:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019090617344095
1831-88225026-610b0f1218342ce45916f29958
e03442e571cf3e3e1fcf451cadae5fab5bef6ba-
N/A-N/A-20190906172718770676