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)

---

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. 88421622 AMP(Standard Characters, see http://uspto.report/TM/88421622/mark.png) has been amended as follows:

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

Registration was refused because the Examining Attorney claimed that the specimen did not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 9 in the application because the mark was not shown on a full communication headset, but rather on what appears to be a part or component of a headset. Applicant submits that the originally submitted specimen was a close-up picture of the applied-for mark on a full communications headset. To further show this, as part of Applicant's substitute specimen, Applicant submits (i) a front view picture of the complete communications headset; (ii) a side view of the headset, which shows the ear cup on which the applied-for mark appears; and (iii) the originally submitted close-up image showing the applied- for mark on the ear cup that is part of the communications headset. In light of the fact that the applied-for mark appears on the goods identified in the application, Applicant respectfully requests that the substitute specimen be accepted and that the specimen refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants; communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants, such headsets for use with communication radios, intercom systems, or other communication network transceivers; communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants, namely, headsets for use in providing hearing protection to the userClass 009 for communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants, such headsets for use with communication radios, intercom systems, or other communication network transceivers; communications headsets specially adapted for protective helmets for use by military, law enforcement, national security, correction institution, industrial, and mining personnel, private military and security organizations, first responders, parachutists, and military simulation participants, namely, headsets for use in providing hearing protection to the user
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of Front and side view of communications headset and close-up photograph of applied-for mark on ear cup of headset .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
JPG file(s):
Specimen File1
Specimen File2
Original PDF file:
SPU0-652204518-20200110101739941035_._AMP_-_Zoom_in_-_Ear_Cup.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Daniel S. Marks. Daniel S. Marks of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 063758-0044.

The phone number is 202-739-5545.

The fax number is 202.739.3001.

The email address is trademarks@morganlewis.com

The applicants proposed attorney information: Daniel S. Marks. Daniel S. Marks of MORGAN, LEWIS & BOCKIUS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 063758-0044.

The phone number is 202-739-5545.

The fax number is 202.739.3001.

The email address is trademarks@morganlewis.com

Daniel S. Marks 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: DANIEL S. MARKS. DANIEL S. MARKS of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 063758-0044.

The phone number is 202-739-5545.

The fax number is 202.739.3001.

The email address is trademarks@morganlewis.com

The applicants proposed correspondence information: Daniel S. Marks. Daniel S. Marks of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 063758-0044.

The phone number is 202-739-5545.

The fax number is 202.739.3001.

The email address is trademarks@morganlewis.com

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: /Kathryn L Eary/      Date: 01/10/2020
Signatory's Name: Kathryn L Eary
Signatory's Position: Corporate Counsel & Secretary
Signatory's Phone Number: 570-282-8206


Response Signature
Signature: /Daniel S. Marks/     Date: 01/10/2020
Signatory's Name: Daniel S. Marks
Signatory's Position: Attorny of record, D.C. bar member

Signatory's Phone Number: 202.739.5545

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:    DANIEL S. MARKS
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   1111 PENNSYLVANIA AVENUE, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Daniel S. Marks
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   1111 PENNSYLVANIA AVENUE, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88421622
Internet Transmission Date: Fri Jan 10 16:18:36 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200110161836040
699-88421622-700a33d1cbdb6b8b5dd95c73b8b
7932684ce8842dbdb53b3b852cc35fc966ebe-N/
A-N/A-20200110101739941035