| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88338621 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://tmng-al.uspto.gov /resting2/api/img/8833862 1/large |
| LITERAL ELEMENT | HSG |
| 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. |
| REGISTRATION MAINTENANCE DOCUMENT(S) FILED | |
| Registration had been refused under Section 2(d), based on the cited registration(s). However, registration maintenance documents were due to be filed for the cited registration(s). It is now believed that these registration maintenance documents were not timely filed, and that the cited registration(s) has been or will be canceled under Section 8 or has expired or will expire under Section 9 and will no longer present a bar to registration under Section 2(d). Therefore, I hereby request removal of this application from suspension for further action by the examining attorney. | |
| COMMENT(S)/REMARK(S) | |
|
In response to the Suspension Notice dated December 16, 2019, please enter the following Remarks. REMARKS The outstanding Office action suspends examination of the above-referenced application pending disposition of the cited registration, as it formed the basis for a partial refusal under Section 2(d). By way of background, the Examining Attorney refused registration of Applicant’s mark with certain marketing services in Class 35, namely, “marketing services, namely, advertising the wares and services of others”, asserting that the applied-for mark for use with these services is likely to be confused with the mark HSG ALUMNI (Reg. No. 4287224). Registrant’s mark HSG ALUMNI was at that time registered for a variety of goods and services in International Classes 9, 16, 28, 35, 38, 39, 41, 42 and 45, but most notably, “advertising” in International Class 35. Examination of the present application was suspended pending disposition of the cited registration, as renewal documents were due on or before February 12, 2019 or during the following six-month grace period, which ended August 12, 2019. As shown in TESS, the cited registration was renewed but only in Classes 9, 16 and 41; all of the remaining classes of the registration – Classes 25, 28, 35, 38, 39, 42 and 45 – were cancelled. Specifically, Applicant notes that Class 35, which contained the advertising services that formed the basis of the refusal of the application, have been canceled. Therefore, Applicant submits that the refusal is now moot, that the refusal should be withdrawn and, as there are no other outstanding issues, the application should be allowed to advance to publication.
CONCLUSION Based on the foregoing discussion, Applicant submits that the refusal to register the mark under Section 2(d) of the Trademark Act should be withdrawn and that the mark should advance to publication. |
|
| OWNER SECTION (current) | |
| NAME | Haslam Sports Group, LLC |
| MAILING ADDRESS | 76 Lou Groza Boulevard |
| CITY | Berea |
| STATE | Ohio |
| ZIP/POSTAL CODE | 44017 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Haslam Sports Group, LLC |
| MAILING ADDRESS | 76 Lou Groza Boulevard |
| CITY | Berea |
| STATE | Ohio |
| ZIP/POSTAL CODE | 44017 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Martha B. Allard, Juhi K. Patel, Johnathan D. Holb |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@bassberry.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Martha B. Allard, Juhi K. Patel, Johnathan D. Holbrook, Paige W. Mills and Robert L. Brewer |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@bassberry.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 125152.0101 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Martha B. Allard/ |
| SIGNATORY'S NAME | Martha B. Allard |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 615-742-7944 |
| DATE SIGNED | 06/02/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 02 16:47:01 ET 2020 |
| TEAS STAMP | USPTO/RSI-X.XX.XX.XX-2020 0602164701505122-88338621 -7106fcb1ec77a4d678c9f742 d67b326f54f69c984f3d5aaeb a92d8792be3b02b-N/A-N/A-2 0200602150952005964 |
| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
In response to the Suspension Notice dated December 16, 2019, please enter the following Remarks.
REMARKS
The outstanding Office action suspends examination of the above-referenced application pending disposition of the cited registration, as it formed the basis for a partial refusal under Section 2(d).
By way of background, the Examining Attorney refused registration of Applicant’s mark with certain marketing services in Class 35, namely, “marketing services, namely, advertising the wares and services of others”, asserting that the applied-for mark for use with these services is likely to be confused with the mark HSG ALUMNI (Reg. No. 4287224). Registrant’s mark HSG ALUMNI was at that time registered for a variety of goods and services in International Classes 9, 16, 28, 35, 38, 39, 41, 42 and 45, but most notably, “advertising” in International Class 35.
Examination of the present application was suspended pending disposition of the cited registration, as renewal documents were due on or before February 12, 2019 or during the following six-month grace period, which ended August 12, 2019.
As shown in TESS, the cited registration was renewed but only in Classes 9, 16 and 41; all of the remaining classes of the registration – Classes 25, 28, 35, 38, 39, 42 and 45 – were cancelled. Specifically, Applicant notes that Class 35, which contained the advertising services that formed the basis of the refusal of the application, have been canceled. Therefore, Applicant submits that the refusal is now moot, that the refusal should be withdrawn and, as there are no other outstanding issues, the application should be allowed to advance to publication.
CONCLUSION
Based on the foregoing discussion, Applicant submits that the refusal to register the mark under Section 2(d) of the Trademark Act should be withdrawn and that the mark should advance to publication.