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)

---

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. 88315345 CHROME(Standard Characters, see http://uspto.report/TM/88315345/mark.png) has been amended as follows:

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

Please see Applicant's substantive response, attached as 'evidence.'

EVIDENCE
Evidence in the nature of Applicant's substantive argument and exhibits. has been attached.
Original PDF file:
evi_2161532230-20191030104537765161_._2019-10-30_CHROME_OAR_-_FINAL_with_Exhibits.pdf
Converted PDF file(s) ( 39 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for entertainment services, namely, organizing and conducting athletic competitions and games in the field of field lacrosse; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; Streaming lacrosse games online over the internet; production of television programs in the field of lacrosse matches; downloadable computer and video game programs; computer and video game software; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; fan-club services; entertainment services, namely, providing a website featuring the following content - non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Charitable services, namely, organizing and conducting volunteer programs and community service projects; clothing namely, shirts, pants, hats, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, headgear, sweatpants, lacrosse jerseys, lacrosse pads, athletic uniforms; all intended to create an association with a professional lacrosse team; gym bags, athletic bags, backpacks, all intended to create an association with a professional lacrosse team; sport bottles sold empty; drinking bottles sold empty; bumper stickers; posters; decals; trading cards; souvenir programs; magazines featuring information in the field of lacrosse; online retail store services featuring clothing, apparel, tickets to sporting events, athletic equipment, bags, backpacks, stickers, trading cards, collectable merchandise, game worn apparel and equipment
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: entertainment services, namely, organizing and conducting athletic competitions and games in the field of field lacrosse; Entertainment services, namely, organizing and conducting athletic competitions and games in the field of lacrosse; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions for the purpose of distribution through broadcast media; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; Streaming lacrosse games online over the internet; production of television programs in the field of lacrosse matches; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; downloadable computer and video game programs; fan club services; computer and video game software; entertainment services, namely, providing a website featuring non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Ticket reservation and booking services for sporting events; fan-club services; entertainment services, namely, providing a website featuring the following content - non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Charitable services, namely, organizing and conducting volunteer programs and community service projects; clothing namely, shirts, pants, hats, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, headgear, sweatpants, lacrosse jerseys, lacrosse pads, athletic uniforms; all intended to create an association with a professional lacrosse team; gym bags, athletic bags, backpacks, all intended to create an association with a professional lacrosse team; sport bottles sold empty; drinking bottles sold empty; bumper stickers; posters; decals; trading cards; souvenir programs; magazines featuring information in the field of lacrosse; online retail store services featuring clothing, apparel, tickets to sporting events, athletic equipment, bags, backpacks, stickers, trading cards, collectable merchandise, game worn apparel and equipmentClass 041 for Entertainment services, namely, organizing and conducting athletic competitions and games in the field of lacrosse; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions for the purpose of distribution through broadcast media; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; production of television programs in the field of lacrosse matches; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; fan club services; entertainment services, namely, providing a website featuring non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Ticket reservation and booking services for sporting events
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 025 for Clothing intended to create an association with a professional lacrosse team, namely, shirts, pants, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, hats, sweatpants, lacrosse jerseys, athletic uniforms
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: Erik M. Pelton. Erik M. Pelton of ERIK M. PELTON & ASSOCIATES, PLLC, is located at

      PO BOX 100637
      ARLINGTON, Virginia 22210
      US

The phone number is 703-525-8009.

The email address is uspto@tm4smallbiz.com

The applicants proposed attorney information: Erik M. Pelton. Other appointed attorneys are Julie S. Shursky. Erik M. Pelton of Erik M. Pelton & Associates, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      PO Box 100637
      Arlington, Virginia 22210
      United States

The phone number is 703-525-8009.

The email address is uspto@tm4smallbiz.com

Erik M. Pelton 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: ERIK M. PELTON. ERIK M. PELTON of ERIK M. PELTON & ASSOCIATES, PLLC, is located at

      PO BOX 100637
      ARLINGTON, Virginia 22210
      US

The phone number is 703-525-8009.

The email address is uspto@tm4smallbiz.com

The applicants proposed correspondence information: Erik M. Pelton. Erik M. Pelton of Erik M. Pelton & Associates, PLLC, is located at

      PO Box 100637
      Arlington, Virginia 22210
      United States

The phone number is 703-525-8009.

The email address is uspto@tm4smallbiz.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Robert F. Sanzillo/      Date: 10/30/2019
Signatory's Name: Robert Sanzillo
Signatory's Position: General Counsel
Signatory's Phone Number: 703-525-8009 (counsel)


Response Signature
Signature: /JulieSShursky/     Date: 10/30/2019
Signatory's Name: Julie S. Shursky
Signatory's Position: Associate Attorney, New York Bar Member

Signatory's Phone Number: 703-525-8009

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:    ERIK M. PELTON
   ERIK M. PELTON & ASSOCIATES, PLLC
   
   PO BOX 100637
   ARLINGTON, Virginia 22210
Mailing Address:    Erik M. Pelton
   Erik M. Pelton & Associates, PLLC
   PO Box 100637
   Arlington, Virginia 22210
        
RAM Sale Number: 88315345
RAM Accounting Date: 10/30/2019
        
Serial Number: 88315345
Internet Transmission Date: Wed Oct 30 13:32:29 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019103013322928
0935-88315345-700302f60496f2d132ef891919
1ccd78eeae9cbfe7779df96b66e832d2b9fe49c3
-CC-32277865-20191030104537765161