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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88316497 |
LAW OFFICE ASSIGNED |
LAW OFFICE 106 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88316497/mark.png |
LITERAL ELEMENT |
CHAOS LC |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
The Examining Attorney has noted the possibility of citing prior pending application Serial Nos. 88/197,071 and 88/197,142 as likely to be confused
with Applicant?s mark. In the event that 88/197,071 and/or 88/197,142 become registered and are cited under Section 2(d), Applicant will submit arguments against a likelihood of confusion. |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
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 equipment |
FINAL DESCRIPTION |
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) |
GOODS AND/OR SERVICES SECTION (025)(class added) |
INTERNATIONAL CLASS |
025 |
DESCRIPTION |
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) |
ATTORNEY SECTION (current) |
NAME |
Erik M. Pelton |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
ERIK M. PELTON & ASSOCIATES, PLLC |
STREET |
PO BOX 100637 |
CITY |
ARLINGTON |
STATE |
Virginia |
POSTAL CODE |
22210 |
COUNTRY |
US |
PHONE |
703-525-8009 |
EMAIL |
uspto@tm4smallbiz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
ATTORNEY SECTION (proposed) |
NAME |
Erik M. Pelton |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Erik M. Pelton & Associates, PLLC |
STREET |
PO Box 100637 |
CITY |
Arlington |
STATE |
Virginia |
POSTAL CODE |
22210 |
COUNTRY |
United States |
PHONE |
703-525-8009 |
EMAIL |
uspto@tm4smallbiz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
OTHER APPOINTED ATTORNEY |
Julie S. Shursky |
CORRESPONDENCE SECTION (current) |
NAME |
ERIK M. PELTON |
FIRM NAME |
ERIK M. PELTON & ASSOCIATES, PLLC |
STREET |
PO BOX 100637 |
CITY |
ARLINGTON |
STATE |
Virginia |
POSTAL CODE |
22210 |
COUNTRY |
US |
PHONE |
703-525-8009 |
EMAIL |
uspto@tm4smallbiz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
CORRESPONDENCE SECTION (proposed) |
NAME |
Erik M. Pelton |
FIRM NAME |
Erik M. Pelton & Associates, PLLC |
STREET |
PO Box 100637 |
CITY |
Arlington |
STATE |
Virginia |
POSTAL CODE |
22210 |
COUNTRY |
United States |
PHONE |
703-525-8009 |
EMAIL |
uspto@tm4smallbiz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Robert F. Sanzillo/ |
SIGNATORY'S NAME |
Robert Sanzillo |
SIGNATORY'S POSITION |
General Counsel |
SIGNATORY'S PHONE NUMBER |
7035258009 |
DATE SIGNED |
11/19/2019 |
RESPONSE SIGNATURE |
/JulieSShursky/ |
SIGNATORY'S NAME |
Julie S. Shursky |
SIGNATORY'S POSITION |
Associate Attorney, New York Bar Member |
SIGNATORY'S PHONE NUMBER |
703-525-8009 |
DATE SIGNED |
11/20/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Nov 20 08:00:29 EST 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XX.XXX-2
0191120080029171575-88316
497-700d63680b6e78c43f45c
6cbe9d20bfc964613d3095e37
e318052d89eda5a12f726-CC-
00272420-2019111918054070
2719 |
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.
88316497 CHAOS LC (Stylized and/or with Design, see http://uspto.report/TM/88316497/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examining Attorney has noted the possibility of citing prior pending application Serial Nos. 88/197,071 and 88/197,142 as likely to be confused with Applicant?s mark. In the event that 88/197,071
and/or 88/197,142 become registered and are cited under Section 2(d), Applicant will submit arguments against a likelihood of confusion.
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: 11/19/2019
Signatory's Name: Robert Sanzillo
Signatory's Position: General Counsel
Signatory's Phone Number: 7035258009
Response Signature
Signature: /JulieSShursky/ Date: 11/20/2019
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: 88316497
RAM Accounting Date: 11/20/2019
Serial Number: 88316497
Internet Transmission Date: Wed Nov 20 08:00:29 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019112008002917
1575-88316497-700d63680b6e78c43f45c6cbe9
d20bfc964613d3095e37e318052d89eda5a12f72
6-CC-00272420-20191119180540702719