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. 88355413 DANA WHITE'S CONTENDER SERIES(Standard Characters, see http://uspto.report/TM/88355413/mark.png) has been amended as follows:

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

DANA WHITE'S CONTENDER SERIES

Class 25

Serial No: 88355413

OFFICE ACTION RESPONSE AND REQUEST TO SUSPEND

This is in response to the Office Action dated June 12, 2019.  In the Office Action, the Examiner required a disclaimer of the text “SERIES” and refused registration citing a likelihood of confusion with the following registrations (“Cited Registrations”):  Registration No. 4695713 for CONTENDERS, Registration No. 5239099 for CONTENDERS BOXER BRIEFS and Registration No. 5230309 for CONTENDERS CLOTHING, all owned by Contenders Clothing, Inc.  The Examiner also cited as a potential bar to registration the following prior pending applications:  Application No. 87760692 for CONTENDER and Application No. 87760699 for CONTENDER & Design, both owned by Contender Boats, Inc. (“Cited Applications”).

 “SERIES” IS NOT DESCRIPTIVE AS APPLIED TO APPLICANT’S GOODS

Applicant respectfully submits that the term “SERIES” in the mark is not descriptive as it relates to Applicant’s goods, namely, belts; bottoms as clothing; coats; dresses; footwear; gloves; headwear; jackets; loungewear; scarves; sleepwear; socks; sweatbands; swimwear; tops as clothing; undergarments; warm up suits in Class 25. 

 Applicant’s Mark refers to the client’s audio and video recordings featuring sports and mixed martial arts and the merchandise offered in connection with same.  Attached hereto as Exhibit 1 and incorporated herein by this reference are true and accurate copies of online advertisements for Applicant’s recorded programs and a sample of Applicant’s related clothing offered under the same brand.

 

Additionally, there are numerous live registrations in Class 25 where “SERIES” is an element and “SERIES” is not disclaimed, including the following:

•  FRIENDS THE TV SERIES, Reg. No. 5932044, Class 25:  Clothing for men, women and children, namely, shirts, t-shirts, tank tops, sweatshirts and lounge pants; sleepwear; headwear; socks; aprons.
  

• SLAYERSERIES.COM, Reg. No. 5758061, Class 25:  Coats; Hats; Headwear; Hoodies; Jackets; Shirts; Sweatshirts; T-shirts.
  

• SERIES THE LABEL, Reg. No. 5707527, Class 25:  Swimsuits.
  

• LPGA Q-SERIES, Reg. No. 5697797, Class 25:  women's clothing in the field of golf, namely, jackets, shirts, sweatshirts, vests, shorts, sweaters, socks, and pullovers; footwear; belts.
  

• Q-SERIES, Reg. No. 5195942, Class 25:  Clothing, namely, hats.
  

• BYSERIES, Reg. No. 4939223, Class 25:  Anoraks; leotards; tights; uniforms; clothing, namely, trousers, suits, skirts, slacks, dresses, jeans, bathing suits, bathing caps, bathing trunks, nightwear, vests, pullovers, pants; money belts; footwear, namely, shoes, boots, sandals, slippers; outerclothing, namely, coats, jackets, jumpers, parkas, cardigans; underclothing, namely, brassieres, drawers, underwear, undershirts, underpants; sweaters; shirts; socks; scarves; neckties; winter gloves, namely, knitted gloves, outdoor gloves, ski gloves, winter gloves including those made of skin, hide or fur; caps being headwear; hats; winter face masks, namely, knit face masks, ski masks; Waterproof clothing, namely, waterproof jackets and pants; belts.
  

• WORLD SERIES GREEN TEAM, Reg. No. 4373051, Class 25:  Clothing, namely, shirts, T-shirts.
  

• SERIES-8 FITNESS, Reg. No. 4809074, Class 25:  Clothing, namely, headbands, shorts, socks, headwraps, namely, headscarves.
  

• TURNPIKE SERIES, Reg. No. 4905316, Class 25:  Clothing, namely, shirts.
  

• WORLD SERIES OF SHEEPSHEAD, Reg. No. 4406782, Class 25:  Wearable garments and clothing, namely, shirts, sweatshirts, hats and caps.
  

• INOV-8 G-SERIES, Reg. No. 5730543, Class 25:  Clothing, namely, pants, jackets, sweaters, shorts, jerseys, tops, gloves, mittens, tights, socks, scarves and mufflers; Footwear; Headwear; Sports apparel, namely, t-shirts, sweatpants, leggings, sweatshirts, sports singlets, base layer tops, sports jackets and sports over uniforms; Running shoes; Shoe soles.
  

• LEAGUE CHAMPIONSHIP SERIES, Reg. No. 3732837, Class 25:  Clothing, namely, caps, hats, shirts, T-shirts.
  

• WORLD SERIES, Reg. No. 3628858, Class 25:  Clothing, namely, caps, hats, knitted headwear, shirts, T-shirts, tank tops, pullovers, vests, shorts, pants, baseball uniforms, jerseys, sweatshirts, sweatpants, jackets, cloth bibs, infant wear, scarves, footwear, socks, hosiery, slippers.
  

• DIVISION SERIES, Reg. No. 3628857, Class 25:  Clothing, namely, caps, hats, shirts, T-shirts.
  

• WORLD SERIES OF GOLF, Reg. No. 3442757, Class 25:  Footwear; clothing, namely, caps, gloves, hats, jackets, pants, rainwear, shirts, shorts, socks, sweaters, sweatshirts, T-shirts, vests, and visors.
  

• FS FSSERIES.COM, Reg. No. 3842249, Class 25:  Clothing, namely, shirts, shorts, race belts, swimwear, jackets, vests, triathlon suits, socks, hats, caps, and visors.
  

• XFSERIES, Reg. No. 3890570, Class 25:  Aprons; Babies' pants; Beachwear; Bibs, not of paper; Bodices; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps; Chasubles; Chemisettes; Clothing for gymnastics, namely, gym shorts, gym suits, Collar protectors; Collars; Combinations; Corselets; Corsets; Cuffs; Detachable collars; Drawers; Dress shields; Dressing gowns; Ear muffs; Fishing vests; Foot muffs, not electrically heated; Footwear; Footwear uppers; Fur stoles; Gaiter straps; Gaiters; Girdles; Gloves; Hosiery; Jackets; Jerseys; Jumpers; Knitwear, namely, knit sweaters, knit shirts, knit dresses; Layettes; Leggings; Body Linen; Liveries; Mantillas; Neckties; Outer clothes, namely, jackets, pullovers, coats; Overalls; Overcoats; Pajamas; Pants; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Pullovers; Ready-made clothing, namely, pants, shirts, coats; Ready-made linings, namely, finished textile linings for clothing; Sashes for wear; Scarves; Shirt fronts; Shirt yokes; Shirts; Shoulder wraps; Shower caps; Skirts; Sleep masks; Slips; Sock suspenders; Socks; Spats, in the nature of leggings and gaiters; Sports jerseys; Stocking suspenders; Sweat-absorbent stockings; Stuff jackets; Suits; Sweat-absorbent underclothes; Sweaters; Teddies; Tee-shirts; Tights; Topcoats; Trouser straps; Trousers; Underclothes; Uniforms; veils; Vests; Waistcoats.
  

• FREEWAY SERIES, Reg. No. 3851501, Class 25:  Clothing, namely, shirts.
  

• WORLD SERIES OF POKER, Reg. No. 3347380, Class 25:  Clothing, namely, t-shirts, knit shirts, sweatshirts, and jackets; headgear, namely, hats, caps.
  

• THE WORLD SERIES OF BEER PONG, Reg. No. 3791794, Class 25:  Shirts not relating to baseball or softball or a baseball or softball team.
  

• WORLD SERIES 2000, Reg. No. 2709813, Class 25:  Clothing, namely, shirts, t-shirts, jackets.
  

• SUBWAY SERIES, Reg. No. 2679302, Class 25:  Clothing, namely shirts.
  

Attached hereto as Exhibit 2 and incorporated herein by this reference are true and accurate copies of the relevant Certificates of Registration for the above-referenced marks.

Accordingly, Applicant respectfully requests that the disclaimer requirement be withdrawn.

 

SUSPENSION OF APPLICATION

 

Pursuant to TMEP §716.02, an examining attorney has the discretion to suspend an application "for good and sufficient cause." 

 

In this case, the Cited Registrations are all the subject of an inter party cancellation action filed before the Board, namely, Contender Boats, Inc. v. Contenders Clothing, LLC, assigned Proceeding No. 92069963 filed November 7, 2018.  This proceeding is relevant to the registrability of the applicant’s mark, as the proceeding seeks to cancel the Cited Registrations and if successful, the Cited Registrations would no longer be a bar to the registration of the Applicant’s mark.

 

Moreover, the Cited Applications have not matured to registration, which pursuant to TMEP §716.02(c), also provides good and sufficient cause to suspend action on the instant application. 

 

Based on the foregoing, Applicant believes that suspension of its application is proper under TMEP §716.02, and therefore, respectfully requests that its application be suspended pending the cancellation action against the Cited Registrations and/or final disposition of the Cited Applications.

EVIDENCE
Evidence in the nature of web page printouts, photo of goods and registration certificates has been attached.
Original PDF file:
evi_63240135132-20191211212550597086_._Exhibit_1__2_.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_63240135132-20191211212550597086_._Exhibit_2.pdf
Converted PDF file(s) ( 25 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25

SIGNATURE(S)
Response Signature
Signature: /Jennifer Ko Craft/     Date: 12/11/2019
Signatory's Name: Jennifer Ko Craft
Signatory's Position: Attorney of Record, Nevada Bar Member

Signatory's Phone Number: 702-550-4400

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.

        
Serial Number: 88355413
Internet Transmission Date: Wed Dec 11 21:32:29 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912112132299
29958-88355413-700c8aad75f03643e4f943c6a
6b0486c784afb5d8e28a6c1f1e5e59d8aed989f5
2-N/A-N/A-20191211212550597086