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. 88239195 COUNTER CULTURE(Standard Characters, see http://uspto.report/TM/88239195/mark.png) has been amended as follows:

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

Applicant respectfully request suspension of this application pending disposition of the cancellation proceeding filed against Ibex Inc.'s COUNTER CULTURE registration (Reg. No. 2785313) that is the subject of the Section 2(d) refusal.

EVIDENCE
Evidence in the nature of copies of applicant's petition to cancel has been attached.
Original PDF file:
evi_1994512131-20190605135928884593_._Petition_to_Cancel.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Original PDF file:
evi_1994512131-20190605135928884593_._Petition_to_Cancel_-_Filing_Receipt.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, footwear and headgear
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1871827 registered 08/08/2018 with a renewal date of __________ and an expiration date of 09/07/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing, footwear and headgear; Clothing, namely, sports jackets, shorts, skirts, dresses, gowns, T-shirts, singlets, jeans, jumpers, jackets, coats, windbreakers, leisure suits, jump suits, vested suits, three piece suits, sleepwear, hosiery, lingerie, underwear, aprons, arm warmers, theatrical costumes, dance costumes, Halloween costumes, folk costumes, leotards, waist belts, belts for clothing, braces for clothing being suspenders, chef coats, clothing collars, cowls being clothing, drawers being clothing, ear muffs, gabardines, gloves for apparel, bicycling gloves, cross-country gloves, snowboard gloves, outdoor gloves, motorcycle gloves, ski gloves, driving gloves, riding gloves, camouflage gloves, halter tops, headbands, hoods being clothing, hoodies, onesies, infant wear, infant sleepers, ready-made interlinings being parts for clothing, finished interlinings for clothing, jerseys, jump suits, clothing layettes, baby layettes for clothing, leather belts, body linens being clothing, mantles being clothing, mitts being clothing, money belts, muffs being clothing, athletic uniforms, karate uniforms, Taekwondo uniforms, ballroom dancing uniforms, school uniforms, liveries being uniforms, play suits, pockets for clothing, ready-made linings for clothing, ready-made linings being parts of clothing, ready-made pockets being parts of clothing, stockings, heelpieces for stockings, socks, ski wear, slips being underclothing, thong underwear, thong beachwear, thong footwear, thong sandals, veils, bridal headpieces as headwear in the nature of veils and fashion hats, clothing wraps, wristbands being clothing, and wristlets being clothing; occupational clothing other than for protection against accident or injury and not being for medical use, namely, jackets, coats, parkas, jerseys, hooded tops, sweaters, jumpers, pullovers, hooded sweaters, uniforms and headwear; swimwear, namely, swimming suits, swimming costumes, bikinis, swimwear wetsuits, rash vests, thong swimwear and board shorts; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material, namely, jackets, coats, parkas, jerseys, hooded tops, sweaters, jumpers, pullovers, hooded sweaters, and headwear; footwear; headwearClass 025 for Clothing, namely, sports jackets, shorts, skirts, dresses, gowns, T-shirts, singlets, jeans, jumpers, jackets, coats, windbreakers, leisure suits, jump suits, vested suits, three piece suits, sleepwear, hosiery, lingerie, underwear, aprons, arm warmers, theatrical costumes, dance costumes, Halloween costumes, folk costumes, leotards, waist belts, belts for clothing, braces for clothing being suspenders, chef coats, clothing collars, cowls being clothing, drawers being clothing, ear muffs, gabardines, gloves for apparel, bicycling gloves, cross-country gloves, snowboard gloves, outdoor gloves, motorcycle gloves, ski gloves, driving gloves, riding gloves, camouflage gloves, halter tops, headbands, hoods being clothing, hoodies, onesies, infant wear, infant sleepers, ready-made interlinings being parts for clothing, finished interlinings for clothing, jerseys, jump suits, clothing layettes, baby layettes for clothing, leather belts, body linens being clothing, mantles being clothing, mitts being clothing, money belts, muffs being clothing, athletic uniforms, karate uniforms, Taekwondo uniforms, ballroom dancing uniforms, school uniforms, liveries being uniforms, play suits, pockets for clothing, ready-made linings for clothing, ready-made linings being parts of clothing, ready-made pockets being parts of clothing, stockings, heelpieces for stockings, socks, ski wear, slips being underclothing, thong underwear, thong beachwear, thong footwear, thong sandals, veils, bridal headpieces as headwear in the nature of veils and fashion hats, clothing wraps, wristbands being clothing, and wristlets being clothing; occupational clothing other than for protection against accident or injury and not being for medical use, namely, jackets, coats, parkas, jerseys, hooded tops, sweaters, jumpers, pullovers, hooded sweaters, uniforms and headwear; swimwear, namely, swimming suits, swimming costumes, bikinis, swimwear wetsuits, rash vests, thong swimwear and board shorts; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material, namely, jackets, coats, parkas, jerseys, hooded tops, sweaters, jumpers, pullovers, hooded sweaters, and headwear; footwear; headwear
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1871827 registered 08/08/2018 with a renewal date of __________ and an expiration date of 09/07/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1994512131-135928884_._Certificate_of_Registration.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant deletes the intent-to-use basis if the Examining Attorney accepts the Section 44(e) basis for all goods identified in the subject application


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1994512131-135928884_._scan0002.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Doug Hainstock
Signatory's Position: Director
Signatory's Phone Number: 5152428923


Response Signature
Signature: /Tracy L. Deutmeyer/     Date: 06/05/2019
Signatory's Name: Tracy L. Deutmeyer
Signatory's Position: Attorney of Record, Iowa Bar Member

Signatory's Phone Number: 515-242-8923

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.

        
Serial Number: 88239195
Internet Transmission Date: Wed Jun 05 17:22:06 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019060517220692
6388-88239195-620b22b5e8bcd207852c0e2bfe
5635cfa93b8dfd5765192f121eb34da8b53d0-N/
A-N/A-20190605163428457408