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 | 88273157 |
LAW OFFICE ASSIGNED | LAW OFFICE 116 |
MARK SECTION | |
MARK FILE NAME | http://uspto.report/TM/88273157/mark.png |
LITERAL ELEMENT | ST |
STANDARD CHARACTERS | NO |
USPTO-GENERATED IMAGE | NO |
ARGUMENT(S) | |
The Examining Attorney has refused registration based on her opinion "the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Classes 16 and 41 in the application or amendment to allege use." The applicant through its counsel respectfully disagrees and requests reconsideration. The specimens submitted with original application included a screen shot (electronic display) displaying the subject mark, included the textual description "magazine" and clearly shows an "add to cart" button as a mean for ordering the goods (or a subscription for buying multiple issues of the magazine). It is respectfully submitted this is a common manner for a mark to appear in the industry in a source identifying capacity for the subject goods. The originally submitted specimens also showed the mark appearing on the Applicant's website in the marketing of the services, including the blog. While it is believed additional evidence of use should not be necessary, in order to avoid delay, we are submitting herein additional specimens showing use of the mark on the goods or, in the case of the services, in the marketing of the services. The specimen materials include historical materials available at the time of filing, as well as current materials (noting that given the nature of the goods and services the materials / surrounding content can change from issue to issue). | |
EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | evi_1-6473113252-20190814182323215076_._ST.specimensofuse.ROA.pdf |
CONVERTED PDF FILE(S) (9 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0002.JPG |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0003.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0004.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0005.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0006.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0007.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0008.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0009.JPG | |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0010.JPG | |
DESCRIPTION OF EVIDENCE FILE | additional materials showing use of the subject mark in connection with the goods and in the marketing of the services |
GOODS AND/OR SERVICES SECTION (016)(current) | |
INTERNATIONAL CLASS | 016 |
DESCRIPTION | |
Printed matter, namely, magazines, printed periodicals, and photographs all featuring content and advertising in the fields of livestock, show cattle, ranching and agriculture; Magazines featuring agricultural and livestock based information and advertising, livestock show results, and features and articles regarding individuals in the agriculture or livestock industries, or with a background in the agriculture or livestock industries | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 01/01/2012 |
FIRST USE IN COMMERCE DATE | At least as early as 01/01/2012 |
GOODS AND/OR SERVICES SECTION (016)(proposed) | |
INTERNATIONAL CLASS | 016 |
DESCRIPTION | |
Printed matter, namely, magazines, printed periodicals, and photographs all featuring content and advertising in the fields of livestock, show cattle, ranching and agriculture; Magazines featuring agricultural and livestock based information and advertising, livestock show results, and features and articles regarding individuals in the agriculture or livestock industries, or with a background in the agriculture or livestock industries | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 01/01/2012 |
FIRST USE IN COMMERCE DATE | At least as early as 01/01/2012 |
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) | |
ORIGINAL PDF FILE | SPU0-6473113252-20190814182323215076_._ST.originalClass_16_Specimen.pdf |
CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0011.JPG |
ORIGINAL PDF FILE | SPU0-6473113252-20190814182323215076_._ST.magazine.pdf |
CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\882\731\88273157\xml4\ROA0012.JPG |
SPECIMEN DESCRIPTION | original specimens - a screen shot (electronic display) displaying the mark on an on-line subscription card with an "add to cart" option for ordering the goods (or multiple issues of the goods); and a scanned copy showing the mark appearing on the goods |
GOODS AND/OR SERVICES SECTION (041)(current) | |
INTERNATIONAL CLASS | 041 |
DESCRIPTION | |
Providing a website featuring information, commentary, photos and non-downloadable multimedia content in the fields of livestock, show cattle, ranching and agriculture and on-line journals, namely, blogs featuring agricultural and livestock based information and advertising, livestock show results and features and commentary regarding individuals in the agriculture or livestock industries, or with a background in the agriculture or livestock industries; and entertainment services, namely, providing information and on-line magazines about livestock shows and show cattle | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 01/01/2012 |
FIRST USE IN COMMERCE DATE | At least as early as 01/01/2012 |
GOODS AND/OR SERVICES SECTION (041)(proposed) | |
INTERNATIONAL CLASS | 041 |
DESCRIPTION | |
Providing a website featuring information, commentary, photos and non-downloadable multimedia content in the fields of livestock, show cattle, ranching and agriculture and on-line journals, namely, blogs featuring agricultural and livestock based information and advertising, livestock show results and features and commentary regarding individuals in the agriculture or livestock industries, or with a background in the agriculture or livestock industries; and entertainment services, namely, providing information and on-line magazines about livestock shows and show cattle | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 01/01/2012 |
FIRST USE IN COMMERCE DATE | At least as early as 01/01/2012 |
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\731\88273157\xml4\ ROA0013.JPG |
SPECIMEN DESCRIPTION | original specimen - screen captures from the Applicant's website showing the mark used in connection with the services/marketing of the services |
ATTORNEY SECTION (current) | |
NAME | Jolly-Johanna L. Northrop |
ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
YEAR OF ADMISSION | NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
FIRM NAME | MICHAEL BEST & FRIEDRICH LLP |
INTERNAL ADDRESS | SUITE 300 |
STREET | 8300 ARISTA PLACE |
CITY | BROOMFIELD |
STATE | Colorado |
POSTAL CODE | 80021 |
COUNTRY | US |
PHONE | 303-800-1580 |
FAX | 877-398-5240 |
mkeipdocket@michaelbest.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 213166-5009 |
ATTORNEY SECTION (proposed) | |
NAME | Jolly-Johanna L. Northrop |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
YEAR OF ADMISSION | XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
FIRM NAME | MICHAEL BEST & FRIEDRICH LLP |
INTERNAL ADDRESS | SUITE 300 |
STREET | 8300 ARISTA PLACE |
CITY | BROOMFIELD |
STATE | Colorado |
POSTAL CODE | 80021 |
COUNTRY | United States |
PHONE | 303-800-1580 |
FAX | 877-398-5240 |
mkeipdocket@michaelbest.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 213166-5009 |
CORRESPONDENCE SECTION (current) | |
NAME | JOLLY-JOHANNA L. NORTHROP |
FIRM NAME | MICHAEL BEST & FRIEDRICH LLP |
INTERNAL ADDRESS | SUITE 300 |
STREET | 8300 ARISTA PLACE |
CITY | BROOMFIELD |
STATE | Colorado |
POSTAL CODE | 80021 |
COUNTRY | US |
PHONE | 303-800-1580 |
FAX | 877-398-5240 |
mkeipdocket@michaelbest.com; jlnorthrop@michaelbest.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 213166-5009 |
CORRESPONDENCE SECTION (proposed) | |
NAME | Jolly-Johanna L. Northrop |
FIRM NAME | MICHAEL BEST & FRIEDRICH LLP |
INTERNAL ADDRESS | SUITE 300 |
STREET | 8300 ARISTA PLACE |
CITY | BROOMFIELD |
STATE | Colorado |
POSTAL CODE | 80021 |
COUNTRY | United States |
PHONE | 303-800-1580 |
FAX | 877-398-5240 |
mkeipdocket@michaelbest.com; jlnorthrop@michaelbest.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 213166-5009 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Jolly-Johanna L. Northrop/ |
SIGNATORY'S NAME | Jolly-Johanna L. Northrop |
SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
DATE SIGNED | 08/14/2019 |
RESPONSE SIGNATURE | /Jolly-Johanna L. Northrop/ |
SIGNATORY'S NAME | Jolly-Johanna L. Northrop |
SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
DATE SIGNED | 08/14/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Aug 14 19:22:14 EDT 2019 |
TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190814192214147172-88273 157-610e65e27ed7824a9bd2c 14fb13cc75b4d0c018ee8f645 48d8c7edb3cbcb23d22-N/A-N /A-20190814182323215076 |
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) |
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.