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. 88303245 LAR-22(Standard Characters, see http://uspto.report/TM/88303245/mark.png) has been amended as follows:

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

This response is submitted in reply to the Office Action issued May 6, 2019.  The informalities and substantive issues raised in the Office Action are addressed in this Response.

 

Registration of the mark was refused on the grounds that it is allegedly merely descriptive of a characteristic of the applied-for goods.  In response, Applicant submits that the “LAR” portion of its mark has acquired distinctiveness for firearms and related parts through its ownership of the following U.S. trademark registrations:

 

Mark	Registration No.	Registration Date	Goods
LAR-300	4804161	September 1, 2015	(Int'l Class: 13) firearms, and replacement parts for firearms
LAR-6.8	5089971	November 29, 2016	(Int'l Class: 13) firearms, and replacement parts for firearms
LAR-40	5155566	March 7, 2017	(Int'l Class: 13) firearms, namely, rifles and spare parts and replacement parts for rifles
LAR-458	5155567	March 7, 2017	(Int'l Class: 13) firearms, namely, rifles and spare parts and replacement parts for rifles
LAR-PDS	4094387	January 31, 2012	(Int'l Class: 13) firearms, namely, rifles and pistols and spare parts and replacement parts for rifles and pistols
LAR-47	4196027	August 21, 2012	(Int'l Class: 13) firearms, namely, rifles and spare and replacement parts for rifles
LAR-15LH LEF-T	4262497	December 18, 2012	(Int'l Class: 13) rifles, and spare and replacement parts for rifles
LAR-15LH	4302620	March 12, 2013	(Int'l Class: 13) firearms, namely, rifles and spare parts and replacement parts for rifles
LAR-15	3232814	April 24, 2007	(Int'l Class: 13) firearms, namely rifles and spare parts and replacement parts for rifles
LAR-8	3470317	July 22, 2008	(Int'l Class: 13) firearms, namely, rifles and spare parts and replacement parts for rifles

 

Applicant has also used “LAR” in commerce in connection with the goods in the subject application for at least five years.  Applicant hereby submits the following statements:

 

LAR has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

LAR has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4804161, 5089971, 5155566, 5155567, 4094387, 4196027, 4262497, 4302620, 3232814, and 3470317.

 

Applicant asserts that the applied-for goods are related to the goods in use with Applicant’s LAR-marks and registrations such that they have acquired distinctiveness, which should warrant the conclusion that the previously created distinctiveness will transfer to the goods in the application upon use.

 

Regarding the request to amend the goods identification, Applicant thanks the Trademark Examining Attorney for her guidance and hereby enters the following amendment:

 

Class 13:  Firearms, namely, rifles and spare and replacement component parts for rifles

 

Applicant notes that the Examining Attorney searched the Office records and found no prior registered or pending mark that would bar registration of Applicant’s mark under Section 2(d).  Upon submission of this response, it is therefore believed that this application will be in condition for publication.  Such action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 013 for Firearms, namely, rifles and spare and replacement parts for rifles
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.

Proposed:
Tracked Text Description: Firearms, namely, rifles and spare and replacement parts for rifles; Firearms, namely, rifles and spare and replacement component parts for riflesClass 013 for Firearms, namely, rifles and spare and replacement component parts for rifles
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.

The applicant's current attorney information: Scott A. Burow. Scott A. Burow of BANNER & WITCOFF, LTD., is located at

      SUITE 3600
      71 SOUTH WACKER DRIVE
      CHICAGO, Illinois 60606
      US
The docket/reference number is 006163.00321.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

The applicants proposed attorney information: Scott A. Burow. Other appointed attorneys are Helen Hill Minsker, Richard S. Stockton, Katherine L. Fink, Anna L. King, Maurine L. Knutsson, Heather R. Smith-Carra, Elizabeth A. Brodzinski, William F. Rauchholz, Dale H. Hoscheit, Joseph M. Potenza, Robert F. Altherr, Ross A. Dannenberg, John M. Fleming, Jordan N. Bodner, Steve S. Chang, Gary D. Fedorochko, Christopher R. Glembocki, Lisa M. Hemmendinger, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Frederic M. Meeker, Darrell G. Mottley, H. Wayne Porter, Christopher B. Roth, Joseph M. Skerpon, Benjamin C. Spehlmann, Susan A. Wolffe, Bradley C. Wright, Paul M. Rivard, C. Andy Mu, Evan M. Clark, Michael Cuviello, Joseph J. Berghammer, Marc S. Cooperman, J. Pieter van Es, Michael L. Krashin, Jon O. Nelson, Christopher J. Renk, Binal J. Patel, Charles W. Shifley, William Allen, Matthew P. Becker, Scott A. Burow, Michael Harris, Erik S. Maurer, Charles L. Miller, Janice V. Mitrius, Thomas K. Pratt, Robert H. Resis, Gregory G. Schlenz, Jason Shull, Timothy C. Meece, Sheldon W. Witcoff, Katie L. Becker,. Scott A. Burow of BANNER & WITCOFF, LTD., 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 3600
      71 SOUTH WACKER DRIVE
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 006163.00321.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

Scott A. Burow 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: SCOTT A. BUROW. SCOTT A. BUROW of BANNER & WITCOFF, LTD., is located at

      SUITE 3600
      71 SOUTH WACKER DRIVE
      CHICAGO, Illinois 60606
      US
The docket/reference number is 006163.00321.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

The applicants proposed correspondence information: Scott A. Burow. Scott A. Burow of BANNER & WITCOFF, LTD., is located at

      SUITE 3600
      71 SOUTH WACKER DRIVE
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 006163.00321.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
LAR 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: /Scott A. Burow/      Date: 10/07/2019
Signatory's Name: Scott A. Burow
Signatory's Position: Attorney of Record, Illinois and DC bar member
Signatory's Phone Number: (312) 463-5000


Response Signature
Signature: /Scott A. Burow/     Date: 10/07/2019
Signatory's Name: Scott A. Burow
Signatory's Position: Attorney of Record, Illinois bar member

Signatory's Phone Number: 312-463-5000

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:    SCOTT A. BUROW
   BANNER & WITCOFF, LTD.
   SUITE 3600
   71 SOUTH WACKER DRIVE
   CHICAGO, Illinois 60606
Mailing Address:    Scott A. Burow
   BANNER & WITCOFF, LTD.
   SUITE 3600
   71 SOUTH WACKER DRIVE
   CHICAGO, Illinois 60606
        
Serial Number: 88303245
Internet Transmission Date: Tue Oct 08 13:21:43 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201910081321434669
27-88303245-610a39f59e81c7eceb3efddc15fe
8bb695a1ddea47b45a2b6aad68eb86a17c4ec-N/
A-N/A-20191007191610211184