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. 88369893 D DINAN SHOCKWARE (Stylized and/or with Design, see http://uspto.report/TM/88369893/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of response to office action and exhibits has been attached.
Original PDF file:
evi_6520916146-20190826162454610437_._D_DINAN_SHOCKWARE_Response_to_Office_Action.pdf
Converted PDF file(s) ( 12 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
Original PDF file:
evi_6520916146-20190826162454610437_._D_DINAN_SHOCKWARE__and_Design__Exhibits.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 009 for Electronic motor vehicle suspension tuning kits comprised of an electronic control unit that monitors suspension performances and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance; computer software that monitors suspension performance and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance
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: Electronic motor vehicle suspension tuning kits comprised of an electronic control unit that monitors suspension performances and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance; computer software that monitors suspension performance and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance; downloadable computer software that monitors suspension performance and delivers re-calculated sensor values to the original suspension control unit to increase suspension performanceClass 009 for Electronic motor vehicle suspension tuning kits comprised of an electronic control unit that monitors suspension performances and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance; downloadable computer software that monitors suspension performance and delivers re-calculated sensor values to the original suspension control unit to increase suspension performance
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: Rachelle A. Dubow, Esq.. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      ONE FEDERAL STREET
      BOSTON, Massachusetts 02110
      US
The docket/reference number is 111845-0006.

The phone number is 617-951-8000.

The fax number is 6179518736.

The email address is trademarks@morganlewis.com

The applicants proposed attorney information: Rachelle A. Dubow, Esq.. Other appointed attorneys are the firm of Morgan, Lewis & Bockius LLP, RON N. DREBEN, KAREN A. BUTCHER, ANITA B. POLOTT, CAROLE R. KLEIN, JOSEPH E. WASHINGTON, KRISTIN H. ALTOFF, DANA S. GROSS, DANIEL S. MARKS, JANE W. WISE, SETH A. RAPPAPORT, CONSTANCE BOUTSIKARIS, and REBECCA E. MCDOUGALL, members of the District of Columbia Bar and RACHEL FERTIG, member of the New York Bar, all located at 1111 Pennsylvania Ave., NW, Washington, D.C. 20004, ROCHELLE D. ALPERT, CARLA B. OAKLEY, SHARON R. SMITH and BRITTANY A. ESTELL, members of the California Bar, PETER G. BYRNE, member of the California Bar and Massachusetts Bar, and GENE K. PARK, member of the District of Columbia Bar, all located at One Market, Spear Street Tower, San Francisco, California 94105, ANDREW J. GRAY IV, member of the California Bar, located at 1400 Page Mill Road, Palo Alto, California 94304, and RACHELLE A. DUBOW, DAVID O. JOHANSON and AMELIA G. PENNINGTON, members of the Massachusetts Bar, all located at One Federal Street, Boston, Massachusetts 02110, all of whom should receive correspondence and documents related to this application through the offices of Morgan, Lewis & Bockius LLP. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ATTN: TMSU
      ONE FEDERAL STREET
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 111845-0006.

The phone number is 617-951-8000.

The fax number is 6179518736.

The email address is trademarks@morganlewis.com

Rachelle A. Dubow, Esq. 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: RACHELLE A. DUBOW, ESQ.. RACHELLE A. DUBOW, ESQ. of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      ONE FEDERAL STREET
      BOSTON, Massachusetts 02110
      US
The docket/reference number is 111845-0006.

The phone number is 617-951-8000.

The fax number is 6179518736.

The email address is trademarks@morganlewis.com; rachelle.dubow@morganlewis.com; peter.byrne@morganlewis.com

The applicants proposed correspondence information: Rachelle A. Dubow, Esq.. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      ONE FEDERAL STREET
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 111845-0006.

The phone number is 617-951-8000.

The fax number is 6179518736.

The email address is trademarks@morganlewis.com; rachelle.dubow@morganlewis.com; peter.byrne@morganlewis.com

SIGNATURE(S)
Response Signature
Signature: /Rachelle A. Dubow/     Date: 08/26/2019
Signatory's Name: Rachelle A. Dubow, Esq.
Signatory's Position: Attorney for Applicant, Massachusetts bar member

Signatory's Phone Number: 6179518939

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:    RACHELLE A. DUBOW, ESQ.
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   ONE FEDERAL STREET
   BOSTON, Massachusetts 02110
Mailing Address:    Rachelle A. Dubow, Esq.
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   ONE FEDERAL STREET
   BOSTON, Massachusetts 02110
        
Serial Number: 88369893
Internet Transmission Date: Mon Aug 26 20:17:56 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019082620175689
6467-88369893-610a67c4262751a90c52c8aa3d
13fc2bc9e38cedabf2a6ad95b85f9b8e0e1831a-
N/A-N/A-20190826162454610437