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. 88345118  (Stylized and/or with Design, see http://uspto.report/TM/88345118/mark.png) has been amended as follows:

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

The Trademark Examining Attorney (the "Examiner") has raised the following issues: (1) Section 2(e)(1) Descriptiveness Refusal?Partial Refusal (2) Specimen Refusal?Partial Refusal (3) Identification of Goods and Services Requirement (4) Disclaimer Format Requirement Applicant wishes to respond to Issues (1), (3) and (4) at this time. Applicant wishes to respond to Issue (2), Specimen Refusal, at a later time after obtaining further information and materials responsive thereto. (1) Section 2(e)(1) Descriptiveness Refusal?Partial Refusal The Examiner states that "the applied-for mark merely describes a feature or characteristic" of applicant?s goods and/or services. This is a misunderstanding of the unique, creative and distinctive features of the applied-for mark (the "Mark"). It is correct that the Mark consists of the three Japanese characters that transliterate as "GO-JU-RYU", which means "HARD-SOFT-STYLE" in English. Applicant has disclaimed that wording in his Voluntary Amendment to the application. However, it is incorrect to state that the Mark merely consists of these three characters surrounded by a circular carrier. The three characters are written in creative and distinctive calligraphy, unique to applicant, and unlike any representations of "GO-JU-RYU" written in Japanese characters by others. The Japanese language is written in three types of characters: Chinese characters (also called Kanji), and two phonetic syllabaries, Hiragana used primarily for native Japanese words and Katakana used primarily for foreign words and sounds. (Attachment 1.) The Mark is written in the first type of these characters: Chinese characters. In Japan, Chinese characters are depicted on computers using Chinese/Japanese/Korean characters or "CJK fonts". Although there are a large number of fonts available. The CJK fonts most commonly used in Japan are "MS PMincho" and its Mincho variants ("Mincho") and "MS PGothic" and its Sans-serif variants ("Gothic"). (Attachment 2.) In Japan, Chinese characters are also written in semi-cursive script and cursive script. Semi-cursive script, called "gyosho" in Japanese is stylized, but there are some computer fonts which try to approximate it, such as "Gyoshotai". (Attachment 3.) Cursive script is even more stylized and is used for calligraphy. There are no commonly used computer fonts for cursive script. Each writer?s calligraphy is very individualized, and Japanese make great efforts at being unique, creative and artistic in their calligraphy. The Japanese call cursive script in general "sosho"?this is broken down even further to unconnected script or "dokuso-sho" and connected characters or "renmentai". (Attachment 4.) Applicant submits with this response, as Attachment 5, a document depicting the characters "GO-JU-RYU" depicted both horizontally and vertically in the two most common computer fonts, MS PMincho and MS PGothic, and the semi-cursive script Gyoshotai. A comparison with these six depictions to the Mark shows that the Mark is depicted in a unique, creative and distinctive manner unlike any of the samples depicted in Attachment 5. The mark is written in the unconnected cursive script style called "dokuso-sho" (see Attachment 4). In the Mark, the character "GO" is depicted on the top slightly left of center in a firm, squared but flowing manner. It is very dissimilar to the "GO" in either MS PMincho or MS PGothic. It bears slight similarity to the "GO" in Gyoshotai, but there are more dissimilarities than similarities, such as the strongly, confidently drawn vertical line to the far right, and the pointed diagonal sweep at the bottom of that vertical line rather than rounded sweep at the bottom of the far right stroke in the Gyoshotai character. Next, in the Mark, the character "JU" is depicted to the lower right of the character "GO". It slants slightly to the left and connects many of the strokes, indicating speed and decisiveness in the writing of the character. Lastly, in the Mark, the character "RYU" to the lower left of the character "GO" and slightly below the character "JU". is written in broad and sweeping strokes. The three strokes on the left are connected together in "renmentai" style, again showing strength and decisiveness. The strokes in the middle again are written in a style that demonstrates speed but confidence. Finally, the last stroke on the lower right flourishes to the right, sweeping under and embracing the character "JU". In summary, the characters "GO-JU-RYU" in the Mark are written in a highly stylized, unique and artistic manner, and are distinctive and completely unlike the depictions of these three characters shown in Attachments 1, 7 or 8 to the Examiner?s Office Action. (The characters "GO-JU" and the character "RYU" are separated in Attachments 7 and 8 to the Office Action, but even if connected, they are written in a generic font and totally unlike the three characters in the Mark.) (2) Specimen Refusal?Partial Refusal Applicant will respond to this portion of the Office Action separately. (3) Identification of Goods and Services Requirement While not agreeing with the characterization of the identified goods as indefinite or too broad, Applicant agrees with the Examiner?s discussion of the identification of goods and services, and hereby deletes the goods in Classes 014, 016, 018, 021, 026 and 035, and amends the goods in Classes 025 and 041 to read as follows: International Class 025: "Clothing, namely, karate training suits, track suits, jackets, T-shirts, hats and caps" International Class 041: "Karate instruction" (4) Disclaimer Format Requirement Applicant agrees with the Examiner?s suggested disclaimer statement, and hereby amends the disclaimer to read as follows: No claim is made to the exclusive right to use the non-Latin characters that transliterate to "GO-JU-RYU" apart from the mark as shown. (5) Supplemental Register Applicant agrees with the advisory to amend the application to seek registration on the Supplemental Register at this time. Applicant appreciates the opportunity to respond to the Office Action and the Examiner?s comments and suggestions made therein. Applicant will respond separately to the issue concerning specimens.

EVIDENCE
Evidence in the nature of Attachment 1 describes the three types of Japanese characters: Hiragana, Katakana and Kanji. Attachment 2 describes different fonts commonly used to depict Japanese characters. Attachment 3 describes semi-cursive script used to write Japanese. Attachment 4 describes more stylized cursive script used to write Japanese. Attachment 5 depicts the characters used in this mark, GO, JU and RYU, in various different fonts. has been attached.
Original PDF file:
evi_2603302417ffe000d80277d5aac87-20191113155853295032_._Attachment_1_-_Japanese_writing_system_-_Wikipedia.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_2603302417ffe000d80277d5aac87-20191113155853295032_._Attachment_2_-_List_of_CJK_fonts_-_Wikipedia.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Original PDF file:
evi_2603302417ffe000d80277d5aac87-20191113155853295032_._Attachment_3_-_Semi-cursive_script_-_Wikipedia.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2603302417ffe000d80277d5aac87-20191113155853295032_._Attachment_4_-_Cursive_script__East_Asia__-_Wikipedia.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_2603302417ffe000d80277d5aac87-20191113155853295032_._Attachment_5_-_GO-JU-RYU_in_Various_Fonts.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing: being embroidered crests, karate training suits, track suits, jackets, T-shirts, hats and caps, sports bags, souvenir pins and decals, and water glasses
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/01/2011 and first used in commerce at least as early as 03/04/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Clothing: being embroidered crests, karate training suits, track suits, jackets, T-shirts, hats and caps, sports bags, souvenir pins and decals, and water glasses; Clothing, namely, karate training suits, track suits, jackets, T-shirts, hats and caps.Class 025 for Clothing, namely, karate training suits, track suits, jackets, T-shirts, hats and caps.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/01/2011 and first used in commerce at least as early as 03/04/2019 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Karate instruction and the promotion of karate tournaments
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/01/2011 and first used in commerce at least as early as 03/04/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Karate instruction and the promotion of karate tournaments; Karate instruction.Class 041 for Karate instruction.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/01/2011 and first used in commerce at least as early as 03/04/2019 , and is now in use in such commerce.
The applicant's current attorney information: John C Kakinuki. John C Kakinuki of KAKINUKI LAW OFFICE, PC, is located at

      STE 270
      1050 NORTHGATE DR
      SAN RAFAEL, California 94903
      US
The docket/reference number is IKGA01.

The phone number is 415-492-2011.

The fax number is 415-492-2014.

The email address is john@kakinukilaw.com

The applicants proposed attorney information: John C Kakinuki. John C Kakinuki of KAKINUKI LAW OFFICE, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      STE 270
      1050 NORTHGATE DR
      SAN RAFAEL, California 94903
      United States
The docket/reference number is IKGA01.

The phone number is 415-492-2011.

The fax number is 415-492-2014.

The email address is john@kakinukilaw.com

John C Kakinuki 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: JOHN C KAKINUKI. JOHN C KAKINUKI of KAKINUKI LAW OFFICE, PC, is located at

      STE 270
      1050 NORTHGATE DR
      SAN RAFAEL, California 94903
      US
The docket/reference number is IKGA01.

The phone number is 415-492-2011.

The fax number is 415-492-2014.

The email address is john@kakinukilaw.com

The applicants proposed correspondence information: John C Kakinuki. John C Kakinuki of KAKINUKI LAW OFFICE, PC, is located at

      STE 270
      1050 NORTHGATE DR
      SAN RAFAEL, California 94903
      United States
The docket/reference number is IKGA01.

The phone number is 415-492-2011.

The fax number is 415-492-2014.

The email address is john@kakinukilaw.com; northgategojukan@live.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use the non-Latin characters that transliterate to "GO-JU-RYU" apart from the mark as shown.


Transliterations
The non-Latin characters in the mark transliterate to "GO-JU-RYU" and this means "HARD-SOFT-STYLE" in English.


Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


SIGNATURE(S)
Response Signature
Signature: /John C Kakinuki/     Date: 11/13/2019
Signatory's Name: John C Kakinuki
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: 415-492-2011

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:    JOHN C KAKINUKI
   KAKINUKI LAW OFFICE, PC
   STE 270
   1050 NORTHGATE DR
   SAN RAFAEL, California 94903
Mailing Address:    John C Kakinuki
   KAKINUKI LAW OFFICE, PC
   STE 270
   1050 NORTHGATE DR
   SAN RAFAEL, California 94903
        
Serial Number: 88345118
Internet Transmission Date: Wed Nov 13 17:00:04 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXX:X
XXX:XX-20191113170004333625-88345118-700
a1ff87dfc831a6f162f38385d570fba6888a186d
ecd3ccebfd685b6cb83431ed-N/A-N/A-2019111
3155853295032