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. 88273157 ST (Stylized and/or with Design, see http://uspto.report/TM/88273157/mark.png) has been amended as follows:

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

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
Evidence in the nature of additional materials showing use of the subject mark in connection with the goods and in the marketing of the services has been attached.
Original PDF file:
evi_1-6473113252-20190814182323215076_._ST.specimensofuse.ROA.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.

Proposed: Class 016 for 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), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 016 . The specimen(s) submitted consists of 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 .
"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].
Original PDF file:
SPU0-6473113252-20190814182323215076_._ST.originalClass_16_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-6473113252-20190814182323215076_._ST.magazine.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.

Proposed: Class 041 for 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), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041 . The specimen(s) submitted consists of original specimen - screen captures from the Applicant's website showing the mark used in connection with the services/marketing of the services .
"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

The applicant's current attorney information: Jolly-Johanna L. Northrop. Jolly-Johanna L. Northrop of MICHAEL BEST & FRIEDRICH LLP, is located at

      SUITE 300
      8300 ARISTA PLACE
      BROOMFIELD, Colorado 80021
      US
The docket/reference number is 213166-5009.

The phone number is 303-800-1580.

The fax number is 877-398-5240.

The email address is mkeipdocket@michaelbest.com

The applicants proposed attorney information: Jolly-Johanna L. Northrop. Jolly-Johanna L. Northrop of MICHAEL BEST & FRIEDRICH LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 300
      8300 ARISTA PLACE
      BROOMFIELD, Colorado 80021
      United States
The docket/reference number is 213166-5009.

The phone number is 303-800-1580.

The fax number is 877-398-5240.

The email address is mkeipdocket@michaelbest.com

Jolly-Johanna L. Northrop submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: JOLLY-JOHANNA L. NORTHROP. JOLLY-JOHANNA L. NORTHROP of MICHAEL BEST & FRIEDRICH LLP, is located at

      SUITE 300
      8300 ARISTA PLACE
      BROOMFIELD, Colorado 80021
      US
The docket/reference number is 213166-5009.

The phone number is 303-800-1580.

The fax number is 877-398-5240.

The email address is mkeipdocket@michaelbest.com; jlnorthrop@michaelbest.com

The applicants proposed correspondence information: Jolly-Johanna L. Northrop. Jolly-Johanna L. Northrop of MICHAEL BEST & FRIEDRICH LLP, is located at

      SUITE 300
      8300 ARISTA PLACE
      BROOMFIELD, Colorado 80021
      United States
The docket/reference number is 213166-5009.

The phone number is 303-800-1580.

The fax number is 877-398-5240.

The email address is mkeipdocket@michaelbest.com; jlnorthrop@michaelbest.com

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: /Jolly-Johanna L. Northrop/      Date: 08/14/2019
Signatory's Name: Jolly-Johanna L. Northrop
Signatory's Position: Attorney of record, Colorado bar member

Response Signature
Signature: /Jolly-Johanna L. Northrop/     Date: 08/14/2019
Signatory's Name: Jolly-Johanna L. Northrop
Signatory's Position: Attorney of record, Colorado bar member

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:    JOLLY-JOHANNA L. NORTHROP
   MICHAEL BEST & FRIEDRICH LLP
   SUITE 300
   8300 ARISTA PLACE
   BROOMFIELD, Colorado 80021
Mailing Address:    Jolly-Johanna L. Northrop
   MICHAEL BEST & FRIEDRICH LLP
   SUITE 300
   8300 ARISTA PLACE
   BROOMFIELD, Colorado 80021
        
Serial Number: 88273157
Internet Transmission Date: Wed Aug 14 19:22:14 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019081419221414
7172-88273157-610e65e27ed7824a9bd2c14fb1
3cc75b4d0c018ee8f64548d8c7edb3cbcb23d22-
N/A-N/A-20190814182323215076