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. 88290174 CHALLENGE(Standard Characters, see http://uspto.report/TM/88290174/mark.png) has been amended as follows:

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

In response to the Section 2(d) refusal, Applicant submits the attached consent and co-existence agreement with the cited registrant, duly executed by both parties. As the Office is aware, such consent agreements "should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason." TMEP 1207.01(d)(viii) (citing various Federal Circuit cases cases). As such, the refusal should be withdrawn. With regard to the amended filing basis, Applicant notes that a copy of the foreign registration was submitted with the original application, and Applicant thus relies on the same under Section 44(e) while retaining the priority claim.

EVIDENCE
Evidence in the nature of Trademark Consent Agreement between Applicant and Ferrari S.p.A. has been attached.
Original PDF file:
evi_6657335-20191023135319418620_._CHALLENGE_-_Ferrari_Consent.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 009 for apparatus, equipment and devices for simulating driving, racing and flying
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Benelux application number 1381544 filed 09/13/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1381544 registered 01/04/2019 with a renewal date of __________ and an expiration date of 09/13/2028 ], 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: apparatus, equipment and devices for simulating driving, racing and flying; Apparatus, equipment and devices for simulating driving, racing and flying, namely, simulators for the steering and control of vehicles in the nature of equipment designed to simulate driving and racing, comprised of an adjustable structure with a seat, steering wheels and pedals used for recreational purposes and for playing video gamesClass 009 for Apparatus, equipment and devices for simulating driving, racing and flying, namely, simulators for the steering and control of vehicles in the nature of equipment designed to simulate driving and racing, comprised of an adjustable structure with a seat, steering wheels and pedals used for recreational purposes and for playing video games
Deleted Filing Basis: 1(b); and 44(d).
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1381544 registered 01/04/2019 with a renewal date of __________ and an expiration date of 09/13/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney information: Peter B. Bromaghim. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) LLP, is located at

      12400 WILSHIRE BOULEVARD, SUITE 700
      LOS ANGELES, California 90025
      US
The docket/reference number is 209791.TBD.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

The applicants proposed attorney information: Peter B. Bromaghim. Other appointed attorneys are M. Christopher Bolen, Melissa G. Ferrario, Anne C. Fleeson, William S. Fultz, Nicholas B. Hawkins, Jack B. Hicks, Jennifer Itzkoff, Sarah Anne Keefe, Laura A. Kees, Tiffani D. Otey, Emily Scheible Whittaker, Randel S. Springer, Michael A. Tobin, Jeffrey S. Whittle. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) 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

      Suite 700
      12400 Wilshire Boulevard
      LOS ANGELES, California 90025
      United States
The docket/reference number is 209791.29.1.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

Peter B. Bromaghim 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: PETER B. BROMAGHIM. PETER B. BROMAGHIM of WOMBLE BOND DICKINSON (US) LLP, is located at

      12400 WILSHIRE BOULEVARD, SUITE 700
      LOS ANGELES, California 90025
      US
The docket/reference number is 209791.TBD.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

The applicants proposed correspondence information: Peter B. Bromaghim. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) LLP, is located at

      Suite 700
      12400 Wilshire Boulevard
      LOS ANGELES, California 90025
      United States
The docket/reference number is 209791.29.1.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.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: /PeteBromaghim/      Date: 10/23/2019
Signatory's Name: Peter B. Bromaghim
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 4243692056


Response Signature
Signature: /PeteBromaghim/     Date: 10/23/2019
Signatory's Name: Peter B. Bromaghim
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 4243692056

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:    PETER B. BROMAGHIM
   WOMBLE BOND DICKINSON (US) LLP
   
   12400 WILSHIRE BOULEVARD, SUITE 700
   LOS ANGELES, California 90025
Mailing Address:    Peter B. Bromaghim
   WOMBLE BOND DICKINSON (US) LLP
   Suite 700
   12400 Wilshire Boulevard
   LOS ANGELES, California 90025
        
Serial Number: 88290174
Internet Transmission Date: Wed Oct 23 14:36:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XX-2019102314364059950
0-88290174-610243a1c593c09371b99e45fa311
f1a876fe53fe9851d18f557bbd835ecea2-N/A-N
/A-20191023140630068621