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. 88331859  (Stylized and/or with Design, see http://uspto.report/TM/88331859/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: (Stylized and/or with Design, see http://uspto.report/TM/88331859/mark.png)
Proposed: (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of of a three-dimensional configuration of the outline of a fishing lure, with a slight boomerang angle on the top and an interior curve, creating a hook on the bottom. The broken lines depicting holes on the top, end, and bottom, eyes, and the weight located in the interior curve indicate placement of the mark on the goods and are not part of the mark.

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

The Office Action refuses registration of Applicant’s mark on the grounds that (1) a new drawing is required, (2) an amended drawing description is required, (3) Applicant must respond to certain informational requests, and (4) the mark purportedly lacks distinctiveness. These issues are discussed below.

 

1. Amended mark drawing

Applicant has submitted an amended drawing of its mark, as required in the Office Action, that shows the non-claimed portion of its product design in dotted lines. It is respectfully submitted that Applicant has satisfied this condition of publication of its application.

 

2. Amended mark description

Applicant has adopted the mark description recommended by the Examining Attorney and that correlates with its amended drawing. It is respectfully submitted that Applicant has satisfied this condition of publication of its application.

 

3-4. Nondistinctiveness refusal and response to informational request

Applicant respectfully submits that its mark has become distinctive, as evidenced by the attached declaration and exhibits thereto. Applicant further respectfully submits that the declaration and exhibits answer the informational requests pertaining to Applicant’s advertising and promotional materials. Additionally, Applicant notes that its mark is not the subject of any patent. The Examining Attorney has entered into evidence via the Office Action alternative designs which are priced roughly the same as Applicant’s goods. Due to confidentiality reasons, Applicant declines to provide information regarding the method and cost of manufacture, but respectfully submits that there is nothing unique about Applicant’s goods that it make it cost less to manufacture relative to other fishing lures. Finally, while Applicant believes its lures are the best, any good fisherman will tell you that how skilled the fisherman is in using a particular lure has a very strong correlation to how well the lure performs, and there are several alternative lures (both made by Applicant and third parties) that fishermen have had success with.

 

In light of the overwhelming evidence presented in the attached affidavit and accompanying exhibits, Applicant respectfully submits that its mark has become distinctive and its application, as amended, is fit for publication. Favorable action is requested. Should the Examining Attorney have any remaining questions or otherwise wish to discuss this matter, please do not hesitate to contact the undersigned. Thank you for your consideration of this response and accompanying materials.

The applicant's current attorney information: William J. Morris III. William J. Morris III of DOWNS RACHLIN MARTIN PLLC, is located at

      199 MAIN STREET, P.O. BOX 190
      BURLINGTON, Vermont 05402-0190
      US
The docket/reference number is 16773002UST1.

The phone number is 802-846-8303.

The fax number is 802-862-7512.

The email address is tmip@drm.com

The applicants proposed attorney information: William J. Morris III. Other appointed attorneys are Cathleen E. Stadecker and Peter Kunin. William J. Morris III of DOWNS RACHLIN MARTIN 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

      199 Main Street
      Burlington, Vermont 05401
      United States
The docket/reference number is 16773002UST1.

The phone number is 802-846-8303.

The fax number is 802-862-7512.

The email address is tmip@drm.com

William J. Morris III 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: WILLIAM J. MORRIS III. WILLIAM J. MORRIS III of DOWNS RACHLIN MARTIN PLLC, is located at

      199 MAIN STREET, P.O. BOX 190
      BURLINGTON, Vermont 05402-0190
      US
The docket/reference number is 16773002UST1.

The phone number is 802-846-8303.

The fax number is 802-862-7512.

The email address is tmip@drm.com

The applicants proposed correspondence information: William J. Morris III. William J. Morris III of DOWNS RACHLIN MARTIN PLLC, is located at

      199 Main Street
      Burlington, Vermont 05401
      United States
The docket/reference number is 16773002UST1.

The phone number is 802-846-8303.

The fax number is 802-862-7512.

The email address is tmip@drm.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.

Original PDF file:
e2f-44911274-124338699_._20191203_Steel_Shad_Declaration_Under_2f.pdf
Converted PDF file(s) ( 11 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
Original PDF file:
e2f-44911274-124338699_._Exhibit_A_Part_1.pdf
Converted PDF file(s) ( 30 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20
2(f) evidence-21
2(f) evidence-22
2(f) evidence-23
2(f) evidence-24
2(f) evidence-25
2(f) evidence-26
2(f) evidence-27
2(f) evidence-28
2(f) evidence-29
2(f) evidence-30
Original PDF file:
e2f-44911274-124338699_._Exhibit_A_Part_2.pdf
Converted PDF file(s) ( 30 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20
2(f) evidence-21
2(f) evidence-22
2(f) evidence-23
2(f) evidence-24
2(f) evidence-25
2(f) evidence-26
2(f) evidence-27
2(f) evidence-28
2(f) evidence-29
2(f) evidence-30
Original PDF file:
e2f-44911274-124338699_._Exhibit_B.pdf
Converted PDF file(s) ( 35 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20
2(f) evidence-21
2(f) evidence-22
2(f) evidence-23
2(f) evidence-24
2(f) evidence-25
2(f) evidence-26
2(f) evidence-27
2(f) evidence-28
2(f) evidence-29
2(f) evidence-30
2(f) evidence-31
2(f) evidence-32
2(f) evidence-33
2(f) evidence-34
2(f) evidence-35
Original PDF file:
e2f-44911274-124338699_._Exhibit_C.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-44911274-150937605_._Exhibit_D.pdf
Converted PDF file(s) ( 18 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
Original PDF file:
e2f-44911274-150937605_._Exhibit_E.pdf
Converted PDF file(s) ( 20 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20

SIGNATURE(S)
Response Signature
Signature: /williamjmorris/     Date: 12/03/2019
Signatory's Name: William J. Morris III
Signatory's Position: Attorney of Record, VT Bar Member

Signatory's Phone Number: 802-846-8303

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:    WILLIAM J. MORRIS III
   DOWNS RACHLIN MARTIN PLLC
   
   199 MAIN STREET, P.O. BOX 190
   BURLINGTON, Vermont 05402-0190
Mailing Address:    William J. Morris III
   DOWNS RACHLIN MARTIN PLLC
   199 Main Street
   Burlington, Vermont 05401
        
Serial Number: 88331859
Internet Transmission Date: Tue Dec 03 16:14:10 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XX-201912031614108795
97-88331859-7004e1ed086615eb21b1d34c0a55
9d7e1e8ef6f2e56a8228be43b0d7a448f5c55c-N
/A-N/A-20191203160103893125