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. 88336408 REVERB(Standard Characters, see http://uspto.report/TM/88336408/mark.png) has been amended as follows:

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

This is written response to the Office Action of April 22, 2019 wherein the Examining Attorney initially refused registration of the subject mark in view an alleged likelihood of confusion between the subject mark and ten (10) U.S. Trademark Registrations for the variations of the mark REVERB (such as REVERB BUMP and REVERBNATION) as directed to goods and services in International Classes 25, 28 and 41. The Examining Attorney also cited the presence of eight (8) pending U.S. trademark applications and suggested that any or all of these applications could be cited as references against the subject application should they mature into registrations. The Examining Attorney also requested that Applicant amend the identification of goods and services. Specifically, Applicant was advised to move ?carnival masks and masquerade masks? from International Class 25 to International Class 28 and to amend International Class 25 to clear up an ambiguity regarding the terms ?boxer shorts? and ?underwear.? Applicant was also requested to amend the identification of services in International Class 41 and provide some additional details concerning the proposed services. Further to the above amendment, Applicant has duly amended the identification of goods and services further to the suggestions of the Examining Attorney. Applicant has moved ?carnival masks and masquerade masks? from International Class 25 to International Class 28 and clarified the identification of services within International Class 41. Applicant has also confirmed that the mark has no descriptive meaning within the relevant trade or industry, does not identify a geographic location and has no meaning in a foreign language. With respect to the eight (8) referenced trademark applications, Applicant notes that referenced Application Serial No. 88/223244 for the mark REVERB LP registered as Reg. No. 5804954 on July 16, 2019 while Application Serial No. 88/190455 for the mark REVERB PAYMENTS registered as Reg. No. 5780529 on June 18, 2019. The records of the USPTO also reflect that while referenced Application Serial Nos. 87/426820, 79/233173 and 87/915988 have all been abandoned, referenced Application Serial Nos. 87/333282, 87/333262 and 87/333270 are still pending. Therefore, without prejudice to Applicant?s right to argue that there is no likelihood of confusion between the subject mark and the referenced registrations and applications, Applicant respectfully requests that this application be placed in suspension pending the resolution of the three active pending applications, one way or another. Such favorable action is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Carnival masks; masquerade masks; dance costumes; masquerade costumes; Halloween costumes; costumes for use in role-playing games, clothing, namely, shirts, t-shirts, sweatshirts, sweatpants, pants, camp shirts, sweaters, jogging pants, shorts, socks, robes, beach pants, tank tops, jackets, scarves, hooded shirts, swimwear, dresses, gloves as clothing, yoga shirts, yoga pants, mittens, neck warmers, gowns, pajamas, underwear, loungewear, women's ceremonial dresses, skirts, blouses; athletic uniforms; leg warmers; headgear, namely, skull caps, hats, caps and visors as headwear; stockings, suspenders, boxer shorts' underwear; raincoats; cloth aprons; footwear; belts; headbands; and bandannas
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: Carnival masks; Dance costumes; masquerade masks; masquerade costumes; Halloween costumes; costumes for use in role-playing games, clothing, namely, shirts, t-shirts, sweatshirts, sweatpants, pants, camp shirts, sweaters, jogging pants, shorts, socks, robes, beach pants, tank tops, jackets, scarves, hooded shirts, swimwear, dresses, gloves as clothing, yoga shirts, yoga pants, mittens, neck warmers, gowns, pajamas, underwear, loungewear, women's ceremonial dresses, skirts, blouses; athletic uniforms; leg warmers; headgear, namely, skull caps, hats, caps and visors as headwear; stockings, suspenders, boxer shorts in the nature of underwear; raincoats; stockings, suspenders, boxer shorts' underwear; cloth aprons; footwear; belts; headbands; and bandannas.; and bandannasClass 025 for Dance costumes; masquerade costumes; Halloween costumes; costumes for use in role-playing games, clothing, namely, shirts, t-shirts, sweatshirts, sweatpants, pants, camp shirts, sweaters, jogging pants, shorts, socks, robes, beach pants, tank tops, jackets, scarves, hooded shirts, swimwear, dresses, gloves as clothing, yoga shirts, yoga pants, mittens, neck warmers, gowns, pajamas, underwear, loungewear, women's ceremonial dresses, skirts, blouses; athletic uniforms; leg warmers; headgear, namely, skull caps, hats, caps and visors as headwear; stockings, suspenders, boxer shorts in the nature of underwear; raincoats; cloth aprons; footwear; belts; headbands; and bandannas.
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 proposes to amend the following class of goods/services in the application:
Current: Class 028 for Modeled plastic toy figurines and attachable wearable, magnetic toy figurines; board games; bubble making wand and solution sets; decorative wind socks; costume masks; inflatable toys; kites; toy vehicles; party favors in the nature of small toys; plastic inflatable balls for amusement; pinatas; playsets for use with toy action figures; punching toys; puzzles; ride-on toys; skateboards; sports balls; plush toys; stuffed toys; toy action figures; toy building blocks capable of interconnection; toy boxes; toy figures; toy whistles; water squirting toys; yo-yos; weapon toys, namely, swords; soft sculpture dolls; playing cards; playing card games; jigsaw puzzles; and puzzle games
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: Modeled plastic toy figurines and attachable wearable, magnetic toy figurines; board games; bubble making wand and solution sets; decorative wind socks; costume masks; inflatable toys; kites; toy vehicles; party favors in the nature of small toys; plastic inflatable balls for amusement; pinatas; playsets for use with toy action figures; punching toys; puzzles; ride-on toys; skateboards; sports balls; plush toys; stuffed toys; toy action figures; toy building blocks capable of interconnection; toy boxes; toy figures; toy whistles; water squirting toys; yo-yos; weapon toys, namely, swords; soft sculpture dolls; playing cards; playing card games; jigsaw puzzles; and puzzle games; puzzle games; carnival masks; and masquerade masks.Class 028 for Modeled plastic toy figurines and attachable wearable, magnetic toy figurines; board games; bubble making wand and solution sets; decorative wind socks; costume masks; inflatable toys; kites; toy vehicles; party favors in the nature of small toys; plastic inflatable balls for amusement; pinatas; playsets for use with toy action figures; punching toys; puzzles; ride-on toys; skateboards; sports balls; plush toys; stuffed toys; toy action figures; toy building blocks capable of interconnection; toy boxes; toy figures; toy whistles; water squirting toys; yo-yos; weapon toys, namely, swords; soft sculpture dolls; playing cards; playing card games; jigsaw puzzles; puzzle games; carnival masks; and masquerade masks.
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 proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, organizing and conducting stage shows, nightclub shows, dance shows, concerts, contests, dances and parties, all provided aboard a cruise ship; entertainment services in the nature of live performances by a musical band, musical performances, live dance performances and live stage shows; entertainment exhibitions in the nature of dance performances; organizing cultural activities; arranging and conducting of concerts; theatrical show performances; and theatrical and musical floor shows provided at performance venues
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 stage shows, nightclub shows, dance shows, concerts, contests, dances and parties, all provided aboard a cruise ship; Entertainment services, namely, organizing and conducting stage shows in the nature of plays, music concerts, dance performances, theatrical show performances including music, dance, drama and acrobatics, nightclub parties, contests, dance events and parties, all provided aboard a cruise ship; entertainment services in the nature of live performances by a musical band, musical performances, live dance performances and live stage shows; entertainment services in the nature of live performances by a musical band, musical performances, live dance performances and live stage shows in the nature of plays, music concerts, dance performances, theatrical show performances including music, dance, drama and acrobatics, entertainment exhibitions in the nature of dance performances; entertainment exhibitions in the nature of dance performances; organizing cultural activities; arranging and conducting of concerts; theatrical show performances provided at performance venues; theatrical show performances; and theatrical and musical floor shows provided at performance venues.; and theatrical and musical floor shows provided at performance venuesClass 041 for Entertainment services, namely, organizing and conducting stage shows in the nature of plays, music concerts, dance performances, theatrical show performances including music, dance, drama and acrobatics, nightclub parties, contests, dance events and parties, all provided aboard a cruise ship; entertainment services in the nature of live performances by a musical band, musical performances, live dance performances and live stage shows in the nature of plays, music concerts, dance performances, theatrical show performances including music, dance, drama and acrobatics, entertainment exhibitions in the nature of dance performances; organizing cultural activities; arranging and conducting of concerts; theatrical show performances provided at performance venues; and theatrical and musical floor shows provided at performance venues.
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: David L. Sigalow. David L. Sigalow of ALLEN, DYER, DOPPELT & GILCHRIST, P.A., is located at

      255 S. ORANGE AVENUE, SUITE 1401
      ORLANDO, Florida 32801
      US
The docket/reference number is 130860.

The phone number is 407-841-2330.

The fax number is 407-841-2343.

The email address is dsigalow@allendyer.com

The applicants proposed attorney information: David L. Sigalow. David L. Sigalow of ALLEN, DYER, DOPPELT & GILCHRIST, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      255 S. ORANGE AVENUE, SUITE 1401
      ORLANDO, Florida 32801
      United States
The docket/reference number is 130860.

The phone number is 407-841-2330.

The fax number is 407-841-2343.

The email address is dsigalow@allendyer.com

David L. Sigalow 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: DAVID L. SIGALOW. DAVID L. SIGALOW of ALLEN, DYER, DOPPELT & GILCHRIST, P.A., is located at

      255 S. ORANGE AVENUE, SUITE 1401
      ORLANDO, Florida 32801
      US
The docket/reference number is 130860.

The phone number is 407-841-2330.

The fax number is 407-841-2343.

The email address is dsigalow@allendyer.com

The applicants proposed correspondence information: David L. Sigalow. David L. Sigalow of ALLEN, DYER, DOPPELT & GILCHRIST, P.A., is located at

      255 S. ORANGE AVENUE, SUITE 1401
      ORLANDO, Florida 32801
      United States
The docket/reference number is 130860.

The phone number is 407-841-2330.

The fax number is 407-841-2343.

The email address is dsigalow@allendyer.com; etoney@addmg.com; dmartinez@allendyer.com

SIGNATURE(S)
Response Signature
Signature: /David L. Sigalow/     Date: 10/22/2019
Signatory's Name: David L Sigalow
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 407-841-2330

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:    DAVID L. SIGALOW
   ALLEN, DYER, DOPPELT & GILCHRIST, P.A.
   
   255 S. ORANGE AVENUE, SUITE 1401
   ORLANDO, Florida 32801
Mailing Address:    David L. Sigalow
   ALLEN, DYER, DOPPELT & GILCHRIST, P.A.
   255 S. ORANGE AVENUE, SUITE 1401
   ORLANDO, Florida 32801
        
Serial Number: 88336408
Internet Transmission Date: Tue Oct 22 12:54:10 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019102212541047
3692-88336408-610159dc7bcc4f69689b82542b
73beb86f7b70b8e374ecc6823ef7729054aa4e78
-N/A-N/A-20191022124756305850