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. 88406429 BULLETPROOF(Standard Characters, see http://uspto.report/TM/88406429/mark.png) has been amended as follows:

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

Dear Examiner: In response to the pending office action, Applicant hereby responds as follows: LIKELIHOOD OF CONFUSION Applicant has obtained a letter of consent from the Registrant owner of cited U.S. Reg. No. 5573968. See attached. Thus, Applicant respectfully requests that cited registration 5573968 be removed as a basis for the Section 2(d) refusal. With regards to the other two cited registrations (5220129 and 5130772), Applicant hereby amends its goods and services as follows: ? Class 012: Automotive body kits comprising external structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles, excluding diesel engines, parts, or components. ? Class 037: Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing, excluding diesel engines, parts, or components. Both cited registrations (5220129 and 5130772) are limited to diesel engines, parts and/or components, which is a very specific type of automotive segment and customer. Applicant's goods/services have no relation to diesel engines, parts and/or components and thus the striking differences between these marks' goods and the Applicant's mark's goods provide a totally different commercial impression among the public and purchasing consumer as to avoid any likelihood of confusion. In view of the above, Applicant respectfully requests that cited registration (5220129 and 5130772) be removed as a basis for the Section 2(d) refusal. REQUIREMENT FOR INFORMATION- DESCRIPTIVENESS ISSUE Applicant hereby provides the following requested information: (1) Are applicant?s goods bulletproof -- that is, are the goods impenetrable to bullets. Applicant's goods are not bulletproof. (2) Are applicant?s services related to bulletproofing -- that is, are the services related to making automobiles impenetrable to bullets. Applicant's goods are not related to bulletproofing. Respectfully Submitted; /johntran/ John D. Tran Attorney of Record USPTO Reg. No. #48911

EVIDENCE
Evidence in the nature of Letter of Consent has been attached.
Original PDF file:
evi_9819568120-20200102121017689216_._letter_of_consent_hasport_exe.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Automotive body kits comprising external structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2002 and first used in commerce at least as early as 04/01/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Automotive body kits comprising external structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles; Pre-designed vinyl vehicle wraps specially adapted for vehicles, excluding diesel engines, parts, and/or components.Class 012 for Automotive body kits comprising external structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles, excluding diesel engines, parts, and/or components.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2002 and first used in commerce at least as early as 04/01/2002 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2002 and first used in commerce at least as early as 04/01/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing; Automobile cleaning and car washing, excluding diesel engines, parts, and/or components.Class 037 for Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing, excluding diesel engines, parts, and/or components.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2002 and first used in commerce at least as early as 04/01/2002 , and is now in use in such commerce.
The applicant's current attorney information: John D. Tran. John D. Tran of RHEMA LAW GROUP, is located at

      6TH FLOOR
      1 PARK PLAZA
      IRVINE, California 92614
      US

The phone number is 949-852-4430.

The fax number is 866-929-3519.

The email address is ipdocket@rhemalaw.com

The applicants proposed attorney information: John D. Tran. John D. Tran of RHEMA LAW GROUP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6TH FLOOR
      1 PARK PLAZA
      IRVINE, California 92614
      United States

The phone number is 949-852-4430.

The fax number is 866-929-3519.

The email address is ipdocket@rhemalaw.com

John D. Tran 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 D. TRAN. JOHN D. TRAN of RHEMA LAW GROUP, is located at

      6TH FLOOR
      1 PARK PLAZA
      IRVINE, California 92614
      US

The phone number is 949-852-4430.

The fax number is 866-929-3519.

The email address is ipdocket@rhemalaw.com; ipdocket@rhemalaw.com

The applicants proposed correspondence information: John D. Tran. John D. Tran of RHEMA LAW GROUP, is located at

      6TH FLOOR
      1 PARK PLAZA
      IRVINE, California 92614
      United States

The phone number is 949-852-4430.

The fax number is 866-929-3519.

The email address is ipdocket@rhemalaw.com; jdt@rhemalaw.com

SIGNATURE(S)
Response Signature
Signature: /johntran/     Date: 01/02/2020
Signatory's Name: John D. Tran
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 9498524430

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 D. TRAN
   RHEMA LAW GROUP
   6TH FLOOR
   1 PARK PLAZA
   IRVINE, California 92614
Mailing Address:    John D. Tran
   RHEMA LAW GROUP
   6TH FLOOR
   1 PARK PLAZA
   IRVINE, California 92614
        
Serial Number: 88406429
Internet Transmission Date: Thu Jan 02 12:37:10 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020010212371044
3459-88406429-70060f7c4664a3fc3385f6efc3
b2359b8d1ee5a8090cc13d362c5aa92f5eba4ad2
6-N/A-N/A-20200102121017689216