| 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 | 88311698 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | AST |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | JWF Industries, Inc. |
| MAILING ADDRESS | 84 Iron Street |
| CITY | Johnstown |
| STATE | Pennsylvania |
| ZIP/POSTAL CODE | 15907 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | JWF Industries, Inc. |
| MAILING ADDRESS | 84 Iron Street |
| CITY | Johnstown |
| STATE | Pennsylvania |
| ZIP/POSTAL CODE | 15907 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| ARGUMENT(S) | |
|
Remarks The following remarks are responsive to the November 27, 2019 Office Action. The Examining Attorney’s comments have been reviewed and carefully considered. In view of the following remarks, passage of the applied-for mark to publication is respectfully requested. The Office Action notes that Applicant previously requested to amend the application from an intent-to-use basis under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), but did not file and satisfy the legal requirements for an allegation of use (either an amendment to allege use or a statement of use). Therefore, in response to these comments, Applicant submits with this response an appropriate Amendment to Allege Use to satisfy the requirements for amending the application from an intent-to-use basis to a use in commerce basis. Regarding the amendment to the Supplemental Register, Applicant submits this claim is now applicable now that the application has been amended from an intent-to use basis to a use in commerce basis. Therefore, Applicant respectfully submits that the descriptiveness refusal has been overcome by amending the present application to move from the Principal Register to the Supplemental Register. Withdrawal of the descriptiveness refusal is respectfully requested. The Office Action also raises a genericness refusal for the applied-for mark and has indicated that this mark is not registrable in view of the evidence attached to the Office Action. Applicant respectfully disagrees with this refusal. Applicant respectfully submits that the Office Action has not provided sufficient evidence to establish that the term “AST” is commonly used with the applied-for goods in the relevant market. The test for genericness of a term is (1) What is the genus of the goods and services? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? Applicant submits that the Office Action has not satisfied the second prong of this test. In particular, Applicant respectfully submits that the evidence provided with the Office Action does not conclusively establish that the applied-for mark is generic. According to TMEP § 1209.01(c)(i), “[t]he examining attorney has the burden of proving that a term is generic by clear evidence.” Applicant submits that the website screenshots attached to the Office Action do not rise to the level of “clear evidence” to establish that the applied-for mark is generic. While this evidence may establish that the applied-for mark is descriptive of the applied-for goods, Applicant does not agree that this evidence establishes that the applied-for mark is generic. Withdrawal of this refusal is respectfully requested. In view of the submitted Amendment to Allege Use, Applicant respectfully submits that the present application is in condition for allowance. Passage of the applied-for mark on the Principal Register to publication is respectfully requested. |
|
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Christian E. Schuster, Reg. No. 43,908 |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@webblaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 6705-1807993 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Christian E. Schuster, Reg. No. 43,908 |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@webblaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 6705-1807993 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /cps/ |
| SIGNATORY'S NAME | Christopher P. Sherwin |
| SIGNATORY'S POSITION | Attorney of Record, PA Bar member |
| SIGNATORY'S PHONE NUMBER | 412-471-8815 |
| DATE SIGNED | 05/26/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 26 12:22:18 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20200526122218445454-8831 1698-7102313159bfe848178a 4675361a3177e5ba7e48e1b06 e7f6619ba81e72dd64f-N/A-N /A-20200526122054148134 |
| 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) |
Remarks
The following remarks are responsive to the November 27, 2019 Office Action. The Examining Attorney’s comments have been reviewed and carefully considered. In view of the following remarks, passage of the applied-for mark to publication is respectfully requested.
The Office Action notes that Applicant previously requested to amend the application from an intent-to-use basis under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), but did not file and satisfy the legal requirements for an allegation of use (either an amendment to allege use or a statement of use). Therefore, in response to these comments, Applicant submits with this response an appropriate Amendment to Allege Use to satisfy the requirements for amending the application from an intent-to-use basis to a use in commerce basis.
Regarding the amendment to the Supplemental Register, Applicant submits this claim is now applicable now that the application has been amended from an intent-to use basis to a use in commerce basis. Therefore, Applicant respectfully submits that the descriptiveness refusal has been overcome by amending the present application to move from the Principal Register to the Supplemental Register. Withdrawal of the descriptiveness refusal is respectfully requested.
The Office Action also raises a genericness refusal for the applied-for mark and has indicated that this mark is not registrable in view of the evidence attached to the Office Action. Applicant respectfully disagrees with this refusal.
Applicant respectfully submits that the Office Action has not provided sufficient evidence to establish that the term “AST” is commonly used with the applied-for goods in the relevant market. The test for genericness of a term is (1) What is the genus of the goods and services? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? Applicant submits that the Office Action has not satisfied the second prong of this test. In particular, Applicant respectfully submits that the evidence provided with the Office Action does not conclusively establish that the applied-for mark is generic. According to TMEP § 1209.01(c)(i), “[t]he examining attorney has the burden of proving that a term is generic by clear evidence.” Applicant submits that the website screenshots attached to the Office Action do not rise to the level of “clear evidence” to establish that the applied-for mark is generic. While this evidence may establish that the applied-for mark is descriptive of the applied-for goods, Applicant does not agree that this evidence establishes that the applied-for mark is generic. Withdrawal of this refusal is respectfully requested.
In view of the submitted Amendment to Allege Use, Applicant respectfully submits that the present application is in condition for allowance. Passage of the applied-for mark on the Principal Register to publication is respectfully requested.