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. 88389768 ARMADILLO (Stylized and/or with Design, see http://uspto.report/TM/88389768/mark.png) has been amended as follows:

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

The application has been refused for registration because of a likelihood of confusion with the mark in US Registration No. 2559136. Applicant respectfully disagrees. Applicant?s logo mark is stylized logo with the wording ARMADILLO to the right of an armadillo shaped thought bubble with a dot cut out of it, as applied to ?financial risk management; insurance agency and brokerage, insurance underwriting services for all types of insurance? in Class 36. The registered mark for aRMadillo, in relevant part for services in Class 36, is described as ?financial analysis, evaluation, appraisal and reporting; provision of financial information; provision of credit assessments, ratings and information; consulting services namely providing information and advice in all the aforesaid areas?. Looking at the file history of the registered aRMaddillo mark, the specimen used for Class 36 is attached hereto. The renewal specimen for the Class 36 services specifically shows that the mark is used on ?credit check? services, including detailed background checks on corporations or individuals. See attached evidence of the renewal specimen 1, 3 and website homepage 2. Applicant argues that the marks are different due to the stylized logo of the Applicant?s mark and that the services are distinct enough that they are not directed to the same consumer and are not in the same channel of trade. The registration is directed to individual and corporate credit services whereas the application is directed to insurance services. To further support Applicants position, the term Armadillo is weak with over 24 live Registrations for the single mark ARMADILLO alone. See 5 which is copies of the registrations, which are in various classes. Other Armadillo registrations in Class 36 include 12 Armadillos for services described as ?lease of real estate; rental of real estate.? See 4 attached. In sum, due to the distinctions in appearance of the mark and the services as well as to the consumers and channels of trade, the cited registration would not likely cause confusion and the application should be allowed to be registered.

EVIDENCE
Evidence in the nature of 1 and 3 are the renewal specimens for the cited Registration; No. 2 is a copy of the cited Registration website homepage 2; No. 4 is a copy of the registration for 12 Armadillos in Class 36, and No. 5 is a list of the 24 live Registrations for the single mark ARMADILLO including a copy of the registrations in the various classes has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_2461231128-20191009203221385533_._REgistrations.pdf
Converted PDF file(s) ( 50 pages)
Evidence-1
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Original PDF file:
evi_2461231128-20191009203221385533_._1renewal.specimen.pdf
Converted PDF file(s) ( 14 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_2461231128-20191009203221385533_._eenshot_2019-10-09_Welcome_to_Armadillo_Business_Information.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_2461231128-20191009203221385533_._4_12Armadillos.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_2461231128-20191009203221385533_._5_Screenshot_2019-10-09_Record_List_Display.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

The applicant's current attorney information: Dara L. Onofrio, Esq. Dara L. Onofrio, Esq of ONOFRIO LAW, is located at

      24 WEST MAIN STREET SUITE 329
      CLINTON, Connecticut 06413
      US
The docket/reference number is SLA 101.

The phone number is 860-552-0770.

The fax number is 2128716113.

The email address is dara@onofriolaw.com

The applicants proposed attorney information: Dara L. Onofrio, Esq. Dara L. Onofrio, Esq of ONOFRIO LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Onofrio Law
      24 WEST MAIN STREET SUITE 329
      CLINTON, Connecticut 06413
      United States
The docket/reference number is SLA 101.

The phone number is 860-552-0770.

The fax number is 2128716113.

The email address is dara@onofriolaw.com

Dara L. Onofrio, 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: DARA L. ONOFRIO, ESQ. DARA L. ONOFRIO, ESQ of ONOFRIO LAW, is located at

      24 WEST MAIN STREET SUITE 329
      CLINTON, Connecticut 06413
      US
The docket/reference number is SLA 101.

The phone number is 860-552-0770.

The fax number is 2128716113.

The email address is dara@onofriolaw.com

The applicants proposed correspondence information: Dara L. Onofrio, Esq. Dara L. Onofrio, Esq of ONOFRIO LAW, is located at

      Onofrio Law
      24 WEST MAIN STREET SUITE 329
      CLINTON, Connecticut 06413
      United States
The docket/reference number is SLA 101.

The phone number is 860-552-0770.

The fax number is 2128716113.

The email address is dara@onofriolaw.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of an armadillo-shaped thought bubble with a dot cut out of it and the wording "ARMADILLO" to the right of it.

SIGNATURE(S)
Response Signature
Signature: /Dara L. Onofrio/     Date: 10/09/2019
Signatory's Name: Dara L. Onofrio
Signatory's Position: Attorney of Record, Connecticut Bar Member

Signatory's Phone Number: 8605520770

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:    DARA L. ONOFRIO, ESQ
   ONOFRIO LAW
   
   24 WEST MAIN STREET SUITE 329
   CLINTON, Connecticut 06413
Mailing Address:    Dara L. Onofrio, Esq
   ONOFRIO LAW
   Onofrio Law
   24 WEST MAIN STREET SUITE 329
   CLINTON, Connecticut 06413
        
Serial Number: 88389768
Internet Transmission Date: Wed Oct 09 20:37:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019100920375871
7168-88389768-6109f97c9522d4c779f1ed6d84
d018cb1ce3bf7df3bce43e2770a5eefa499e1fe-
N/A-N/A-20191009203221385533