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. 88448948 SPLASH (Stylized and/or with Design, see http://uspto.report/TM/88448948/mark.png) has been amended as follows:

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

Refusal of Registration - Section 2(d) In the Office Action the Examining Attorney has refused registration of the mark for the goods in Class 25 and Class 40 in view of the Examiner Attorney?s finding of a likelihood of confusion between the applied-for mark and a number of prior registrations and prior-filed applications including the term SPLASH and used in conjunction with goods in International Class 25, namely, swimwear, and services in International Class 40, namely, direct-to- garment printing services and dye-sublimation printing services. Applicant respectfully traverses the Examining Attorney?s refusal of registration of the applied-for mark. More specifically, with this response applicant has amended the Identification of Goods to specify that the athletic uniforms are uniforms printed with consumer-customized graphics and textures in a sublimation printing process. As such, the goods covered by the present application are highly distinct from swimsuits in both the form of the goods themselves and the channels of trade the goods are offered in due to the consumer-customized nature of the graphics and textures of the uniforms as well as the nature of the sublimation printing process employed to form the uniforms with the selected graphics and textures which is not present in the goods of the cited registrations for swimsuits nor is it implied. As such, the Examining Attorney states in the Office Action that the goods need not be identical or even competitive so long as the circumstances surrounding their marketing are such that they could be mistakenly thought to emanate from the same source. However, as the goods of the present application are marketed in a manner emphasizing the ability of the consumer to design and have sublimation printed the consumer designed graphics on the uniforms, the circumstances surround the marketing of swimwear and of uniforms printed with consumer-customized graphics and textures in a sublimation printing process are highly different from one another. Further, with regard to the services in Class 40, with this response applicant has amended the services to include Internet-based consumer-selected graphic design and sublimation printing services for athletic uniforms with consumer-customized graphics and textures. Thus, the services provide not only the sublimation printing services but also the consumer-directed design of the sublimation printed uniform. The ability of the consumer to design the sublimation graphic to be printed on the uniform along with the consumer-customized graphics and textures provides a significant differentiation from the direct-to-garment printing services and dye-sublimation printing services of the cited registrations. Therefore, applicant believes the highly distinct nature of the goods and services covered by the present application from those recited in each of the cited prior registrations and pending applications more than overcomes any similarity in the nature of the marks themselves. As a result, applicant respectfully requests that the Examining Attorney withdraw the refusal of registration of the mark for the applied-for mark. Identification of Goods and Services Amendment In the Office Action the Examining Attorney has required that the Identification of Gods and Services be amended to place the consumer-customized graphics and textures sublimation printing services in International Class 40. With this response, applicant has amended the Identification of Goods and Services in the Manner specified by the Examining Attorney, in satisfaction of the requirement of the Examining Attorney. Multi-Class Application Requirements With this response, in view of the two classes of goods and services covered by the application as amended, applicant submits and additional filing fee in the amount of $275 to cover the additional class of goods or services covered in the application. Further, with this response, applicant submits a specimen that was in use at least as early as the dates of first use specified in the as-filed application showing use of the mark in conjunction with both the goods and the services covered by the application. In addition, applicant through its attorney hereby states that the attached substitute specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application. CONCLUSION In light of the above arguments, Applicant believes the application is now in proper form for publication, and such action is respectfully requested. The Examining Attorney is invited to contact the undersigned by telephone if it would help expedite prosecution and publication of this application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Sublimation printing services for athletic uniforms; athletic uniforms formed in a sublimation printing process
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/31/2017 and first used in commerce at least as early as 01/31/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Sublimation printing services for athletic uniforms; Internet-based sublimation consumer-selected graphic design and printing services for athletic apparel, namely, uniforms, jerseys, t-shirts and sportswear with consumer-customized graphics and textures; athletic uniforms formed in a sublimation printing processClass 040 for Internet-based sublimation consumer-selected graphic design and printing services for athletic apparel, namely, uniforms, jerseys, t-shirts and sportswear with consumer-customized graphics and textures
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/31/2017 and first used in commerce at least as early as 01/31/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 040 . The specimen(s) submitted consists of a page from Applicant's catalog showing use of the mark .
"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]. Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 025 for Athletic apparel, namely, uniforms, jerseys, t-shirts and sportswear printed with consumer designed or customized graphics and textures formed in a sublimation printing process
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/31/2017 and first used in commerce at least as early as 01/31/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 025 . The specimen(s) submitted consists of a page from Applicant's catalog showing use of the mark .
"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]. Specimen File1

The applicant's current attorney information: Mathew E. Corr. Mathew E. Corr of BOYLE FREDRICKSON, S.C., is located at

      840 NORTH PLANKINTON AVENUE
      MILWAUKEE, Wisconsin 53203
      US
The docket/reference number is 1018.063.

The phone number is 414-225-9755.

The fax number is 414-225-9753.

The email address is docketing@boylefred.com

The applicants proposed attorney information: Mathew E. Corr. Other appointed attorneys are All of the attorneys associated with Boyle Fredrickson, C.C.. Mathew E. Corr of BOYLE FREDRICKSON, S.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      840 NORTH PLANKINTON AVENUE
      MILWAUKEE, Wisconsin 53203
      United States
The docket/reference number is 1018.063.

The phone number is 414-225-9755.

The fax number is 414-225-9753.

The email address is docketing@boylefred.com

Mathew E. Corr 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: MATHEW E. CORR. MATHEW E. CORR of BOYLE FREDRICKSON, S.C., is located at

      840 NORTH PLANKINTON AVENUE
      MILWAUKEE, Wisconsin 53203
      US
The docket/reference number is 1018.063.

The phone number is 414-225-9755.

The fax number is 414-225-9753.

The email address is docketing@boylefred.com

The applicants proposed correspondence information: Mathew E. Corr. Mathew E. Corr of BOYLE FREDRICKSON, S.C., is located at

      840 NORTH PLANKINTON AVENUE
      MILWAUKEE, Wisconsin 53203
      United States
The docket/reference number is 1018.063.

The phone number is 414-225-9755.

The fax number is 414-225-9753.

The email address is docketing@boylefred.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: /Mathew E. Corr/      Date: 12/23/2019
Signatory's Name: Mathew E. Corr
Signatory's Position: Attorney of Record, WI Bar Member
Signatory's Phone Number: 414-225-9755


Response Signature
Signature: /Mathew E. Corr/     Date: 12/23/2019
Signatory's Name: Mathew E. Corr
Signatory's Position: Attorney of Record, WI Bar Member

Signatory's Phone Number: 414-225-9755

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:    MATHEW E. CORR
   BOYLE FREDRICKSON, S.C.
   
   840 NORTH PLANKINTON AVENUE
   MILWAUKEE, Wisconsin 53203
Mailing Address:    Mathew E. Corr
   BOYLE FREDRICKSON, S.C.
   840 NORTH PLANKINTON AVENUE
   MILWAUKEE, Wisconsin 53203
        
RAM Sale Number: 88448948
RAM Accounting Date: 12/23/2019
        
Serial Number: 88448948
Internet Transmission Date: Mon Dec 23 14:19:20 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191223141920995
467-88448948-700bc6c17352aca5fc53c5adbcc
f27fcbcb13eec2bafa31948b0d678dc7dda9bdc-
CC-19195864-20191223141746621411