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. 88402737 GATE FACTORY(Standard Characters, see http://uspto.report/TM/88402737/mark.png) has been amended as follows:

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

IDENTIFICATION OF SERVICES

            The Office Action states, “The identification for “providing online non-downloadable software” in International Class 42 is indefinite and must be clarified to specify the purpose or function of the software.” Thus, Applicant has amended the identification of services below.  

International Class 042- Providing online non-downloadable software for producing three-dimensional models of barns, crates, and gates; Providing online non-downloadable software for customization of barns, crates, gates, and the like

In light of the amendments made to the identification of services, Applicant believes this rejection has been overcome and respectfully requests withdrawal of the rejection and approval of the trademark application.

 

DISCLAIMER

The Office Action stated, “Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. In this case, Applicant must disclaim the word “GATE”  in the mark because it is not inherently distinctive. This unregistrable term is merely descriptive of a function, purpose, or use of applicant’s services.” In order to advance prosecution, Applicant offers the following disclaimer in order to satisfy the requirement:

            No claim is made to the exclusive right to use “GATE” apart from the mark as shown.

Applicant respectfully requests withdrawal of the rejection and requests allowance of its trademark application.

 

 

 

 

 

 

 

 

 

Conclusion

It is believed that Applicant has responded to all of the Examining Attorney’s questions, objections and rejections and that the trademark application is now in condition to go forward with publication.

If any further questions or concerns remain, the Examining Attorney is encouraged to contact the undersigned to expeditiously resolve any outstanding matters.

 

                                                                        Respectfully submitted,

 

                                                                        /JORDAN MEGGISON-DECKER/

                                                                       

Jordan E. Meggison-Decker

                                                                        Reg. No. 74,127

                                                                        BROWN WINICK LAW FIRM

                                                                        666 Grand Avenue

                                                                        Suite 2000, Ruan Center

                                                                        Des Moines, Iowa  50309

                                                                        Phone No. 515-242-2400

                                                                        Fax No. 515-242-2488

                                                                        Customer No. 47608

                                                                        Attorney of Record

 

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing online non-downloadable software; Providing online non-downloadable software for customization of barns, crates, gates, and the like
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: Providing online non-downloadable software; Providing online non-downloadable software for producing three-dimensional models of barns, crates, and gates; Providing online non-downloadable software for customization of barns, crates, gates, and the likeClass 042 for Providing online non-downloadable software for producing three-dimensional models of barns, crates, and gates; Providing online non-downloadable software for customization of barns, crates, gates, and the like
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: Jordan Meggison-Decker. Jordan Meggison-Decker of BROWNWINICK LAW FIRM, is located at

      666 GRAND AVE., SUITE 2000
      DES MOINES, Iowa 50309
      US
The docket/reference number is 25106.0013.

The phone number is 515-242-2400.

The fax number is 515-242-2488.

The email address is ip@brownwinick.com

The applicants proposed attorney information: Jordan Meggison-Decker. Jordan Meggison-Decker of BROWNWINICK LAW FIRM, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      666 GRAND AVE., SUITE 2000
      DES MOINES, Iowa 50309
      United States
The docket/reference number is 25106.0013.

The phone number is 515-242-2400.

The fax number is 515-242-2488.

The email address is ip@brownwinick.com

Jordan Meggison-Decker 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: JORDAN MEGGISON-DECKER. JORDAN MEGGISON-DECKER of BROWNWINICK LAW FIRM, is located at

      666 GRAND AVE., SUITE 2000
      DES MOINES, Iowa 50309
      US
The docket/reference number is 25106.0013.

The phone number is 515-242-2400.

The fax number is 515-242-2488.

The email address is ip@brownwinick.com

The applicants proposed correspondence information: Jordan Meggison-Decker. Jordan Meggison-Decker of BROWNWINICK LAW FIRM, is located at

      666 GRAND AVE., SUITE 2000
      DES MOINES, Iowa 50309
      United States
The docket/reference number is 25106.0013.

The phone number is 515-242-2400.

The fax number is 515-242-2488.

The email address is ip@brownwinick.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use GATE apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /JORDAN MEGGISON-DECKER/     Date: 10/08/2019
Signatory's Name: Jordan Meggison-Decker
Signatory's Position: Attorney of Record, Iowa Bar Member

Signatory's Phone Number: 5152422400

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:    JORDAN MEGGISON-DECKER
   BROWNWINICK LAW FIRM
   
   666 GRAND AVE., SUITE 2000
   DES MOINES, Iowa 50309
Mailing Address:    Jordan Meggison-Decker
   BROWNWINICK LAW FIRM
   666 GRAND AVE., SUITE 2000
   DES MOINES, Iowa 50309
        
Serial Number: 88402737
Internet Transmission Date: Tue Oct 08 12:37:00 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20191008123700269
625-88402737-61027d87b72ada6292dff6f8720
4b5d25e89b3de67a2fab711d54b70b7881efbe4-
N/A-N/A-20191008123349334717