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. 88416913 NEVIS(Standard Characters, see http://uspto.report/TM/88416913/mark.png) has been amended as follows:

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

Section 2(e)(2), 2(a), and 2(e)(3) Refusals

The Examining Attorney has refused registration of Applicant’s mark, NEVIS, as primarily geographically descriptive, geographically deceptive, and/or primarily geographically deceptively misdescriptive. 

Applicant’s mark is not primarily geographically descriptive, geographically deceptive, and/or primarily geographically deceptively misdescriptive because the main effect of the mark, when used in association with the identified goods, is to suggest a certain lifestyle and relaxation associated with Nevis.  See In re Zeller, Ser. No. 77544307 (TTAB Sep. 30, 2009).  The Examining Attorney has provided evidence that sailing is available as an activity for those traveling to Nevis.  However, this is not evidence that sailboats, parts, and accessories for sailboats are known to originate from Nevis.  Nor is this evidence that relevant consumers are likely to associate the source of the goods with the place.  In fact, there is no evidence at all that Nevis has the industrial or manufacturing industries necessary for the production of Applicant’s goods.  Id. at 12.  Merely having an address near Nevis is not enough to establish a goods/place relationship.  Id. at 13 (citing In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1454 (TTAB 1994) (“[T]he mere fact that applicant’s headquarters are in Bristol, England does not mandate a finding here that a goods/place association should be presumed.”). 

 

Thus, because NEVIS is suggestive of a certain lifestyle and quality of life when used in connection with the identified goods, and because purchasers are unlikely to make a goods-place association (i.e., purchasers are unlikely to believe that the goods originate in the geographic place identified in the mark), Applicant’s mark is not geographically deceptive, and/or primarily geographically deceptively misdescriptive.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 039 for Sailboats, and parts and accessories for sailboats namely, spars, booms, center boards, rudder covers, boat covers, canvas covers, enclosures and windows sold as a unit and affixed to the boat for recreational boating and marine use; canvas bags for storage of sailboats; boat parts; sailboat structural parts including beams, booms and boom hardware; masts and mast hardware; hulls, hull sections and hull hardware for sailboats; rudders, rudder components and rudder assemblies; tillers, tiller components and tiller assemblies for sailboats; hull fittings including drain plugs, cleats, bailers, coamings, centerboards, keels and gudgeons for saiboats; fitted and semi-fitted covers for sailboats; sailing dinghies; Tiller connectors for use with sailing dinghies; covers for sailing boats; canvas for sails; Strollers; Pushchairs; prams; baby carriages; car seats for babies and infants; Arranging, conducting and organizing sporting events and competitions in the sport of sailing; entertainment in the nature of sailboat races; education in the nature of teaching of yachting, sailing, steering boats, ships or vessels; providing of training for groups and individuals relating to yachting, sailing, steering boats, ships or vessels; sporting and cultural activities, namely, organizing, sanctioning, conducting, regulating and governing amateur athletic programs and activities, namely, in connection with vehicles and apparatus for locomotion by sea; publication of books, magazines, journals, newspapers, periodicals, catalogues, and brochures in the field of sailing; education; providing of training; entertainment; sporting and cultural activities

Applicant hereby adds the following class of goods/services to the application:
New: Class 012 (Original Class: 039 ) for Sailboats, and parts and accessories for sailboats namely, spars, booms, center boards, rudder covers, boat covers, canvas covers, enclosures and windows sold as a unit and affixed to the boat for recreational boating and marine use; fitted canvas bags for storage of sailboats; boat parts, namely, boat rudders, boat tillers; sailboat structural parts, namely, beams, and booms; mast for boats; boat hulls, structural sections of hulls for sailboats, namely, keels, decks; rudders, rudder structural components, namely, rudder flaps, rudder blades and rudder assemblies; sailboat tillers, sailboat tiller structural components, namely, tiller blades, tiller rope pulleys and tiller assemblies for sailboats; structural parts of sailboat hulls, namely, drain plugs, cleats, coamings in the nature of raised framework around the hull to keep out water, centerboards, and keels; fitted and semi-fitted covers for sailboats; sailing dinghies; tiller connectors as structural parts of tillers of sailing dinghies; fitted covers for sailing boats; strollers, pushchairs, prams; baby carriages; car seats for babies
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Arranging, conducting and organizing sporting events and competitions in the sport of sailing; entertainment in the nature of sailboat races; education in the nature of teaching of yachting, sailing, the steering of boats, ships and vessels; providing of training for groups and individuals relating to yachting, sailing, the steering of boats, ships and vessels; sporting and cultural activities, namely, encouraging amateur sports and physical education by organizing, sanctioning, conducting, regulating, and governing amateur athletic programs and activities all in connection with marine vessels; publication of books, magazines, journals, newspapers, periodicals, catalogues, and brochures in the field of sailing; educational services, namely, conducting programs in the field of sailing; providing training in the field of sailing; entertainment in the nature of conducting sailing races; organizing sporting and cultural activities, namely, organizing sailing races
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.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Velum Ltd., a corporation of Antigua and Barbuda, having an address of
      17 rue de centrier
      Geneva, 1211
      Switzerland

Proposed: Velum Ltd., a limited liability company legally organized under the laws of Antigua and Barbuda, having an address of
      17 rue de centrier
      Geneva, 1211
      Switzerland

The applicant's current attorney information: Brian E. Turung. Brian E. Turung of FAY SHARPE LLP, is located at

      1228 EUCLID AVENUE
      CLEVELAND, Ohio 44115
      US
The docket/reference number is FRTS 500093U.

The phone number is 216-363-9000.

The email address is uspto@faysharpe.com

The applicants proposed attorney information: Brian E. Turung. Brian E. Turung of FAY SHARPE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1228 EUCLID AVENUE
      CLEVELAND, Ohio 44115
      United States
The docket/reference number is FRTS 500093U.

The phone number is 216-363-9000.

The email address is uspto@faysharpe.com

Brian E. Turung 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: BRIAN E. TURUNG. BRIAN E. TURUNG of FAY SHARPE LLP, is located at

      1228 EUCLID AVENUE
      CLEVELAND, Ohio 44115
      US
The docket/reference number is FRTS 500093U.

The phone number is 216-363-9000.

The email address is uspto@faysharpe.com

The applicants proposed correspondence information: Brian E. Turung. Brian E. Turung of FAY SHARPE LLP, is located at

      1228 EUCLID AVENUE
      CLEVELAND, Ohio 44115
      United States
The docket/reference number is FRTS 500093U.

The phone number is 216-363-9000.

The email address is uspto@faysharpe.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /bet/      Date: 02/03/2020
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of record/Ohio bar member
Signatory's Phone Number: 216-363-9000


Response Signature
Signature: /bet/     Date: 02/03/2020
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of Record/Ohio bar member

Signatory's Phone Number: 216-363-9000

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:    BRIAN E. TURUNG
   FAY SHARPE LLP
   
   1228 EUCLID AVENUE
   CLEVELAND, Ohio 44115
Mailing Address:    Brian E. Turung
   FAY SHARPE LLP
   1228 EUCLID AVENUE
   CLEVELAND, Ohio 44115
        
RAM Sale Number: 88416913
RAM Accounting Date: 02/03/2020
        
Serial Number: 88416913
Internet Transmission Date: Mon Feb 03 17:15:20 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020020317152024
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728dc4d9570166a2512c74465a2e692c6e5c93b0
-CC-15189007-20200203170331800471