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. 88348289 MARTINI RACING CICLISMO MARTINI (Stylized and/or with Design, see http://uspto.report/TM/88348289/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 033 for Alcoholic beverages except beers
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: Alcoholic beverages except beers; Alcoholic beverages except beers, prepared alcoholic cocktails and alcoholic cocktail mixesClass 033 for Alcoholic beverages except beers, prepared alcoholic cocktails and alcoholic cocktail mixes
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: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP4-60650.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed attorney information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP4-60650.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

JOHN P. MURTAUGH 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 P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP4-60650.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed correspondence information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP4-60650.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use RACING and CICLISMO for Int'l Class 41 apart from the mark as shown.


Miscellaneous Statement
Applicant's counsel thanks the Examiner for the careful consideration given the application. Applicant has entered the disclaimer of the words RACING and CICLISMO in Class 41 as suggested by the Examiner. With respect to the request for a disclaimer of MARTINI in Class 33, applicant has narrowed its listing of goods in Class 33 to recite: "alcoholic beverages except beers, prepared alcoholic cocktails and alcoholic cocktail mixes". Accordingly, MARTINI is no longer descriptive of the goods, since the alcoholic cocktails (for which MARTINI is descriptive) are no longer included in the identification of goods. Applicant notes that this strategy of narrowing the goods was successful in applicant's US Registration Nos. 5402420 and 5402419 for MARTINI & ROSSI; the Trademark Office accepted applicant's narrowing of the goods in these two registrations to overcome the need for a disclaimer so this strategy should also be accepted in the present application. Since all open items have now been resolved, it is requested that the application now be passed to publication.


SIGNATURE(S)
Response Signature
Signature: /johnpmurtaugh/     Date: 10/14/2019
Signatory's Name: JOHN P. MURTAUGH
Signatory's Position: ATTORNEY OF RECORD, OHIO BAR MEMBER

Signatory's Phone Number: 216-579-1700

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 P. MURTAUGH
   PEARNE & GORDON LLP
   
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
Mailing Address:    JOHN P. MURTAUGH
   PEARNE & GORDON LLP
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
        
Serial Number: 88348289
Internet Transmission Date: Mon Oct 14 18:04:24 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191014180424
880043-88348289-6102e52d289e28cdb8f43517
d57b74bd7426369f6e6439a342896f155bd98d12
fe-N/A-N/A-20191014122208268078