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. 88452655 ELITE PRO(Standard Characters, see http://uspto.report/TM/88452655/mark.png) has been amended as follows:

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

The Examining Attorney issued a Nonfinal Office Action for the instant application based on a finding of three conflicting registrations and a prior-filed potentially conflicting pending application. In making her determination, the Examining Attorney referred to two of the factors set forth in In re E. I. du Pont de Nemours & Co.: (a) comparing the marks; and (b) comparing the services. Applicant accepts the Examining Attorney?s determination that the ?ELITE? portion in Applicant?s mark is identical to the ?ELITE? portion in the registered marks and in the other pending application. However, Applicant respectfully disagrees with the Examining Attorney?s determination that Applicant?s mark is used on services that are similar, commercially related, or travel in the same trade channels as the registered marks and the other pending application. The description of services for Applicant?s mark notes that it provides association services to travel agents and travel agencies and provides membership club services to these travel agents and travel agencies. Applicant?s description of services does not include the provision of any membership club services, such as discounts, directly to consumers. Rather, the services are provided only to travel agents and travel agencies. Conversely, the descriptions of services for the three registrations specify that the Registrant?s consumer benefit program is directed only to consumers. Likewise, the description of services for the other pending application specifies that such applicant?s services are directed only to customers. Neither the Registrant nor the other applicant?s services are directed to travel agents or travel agencies. This is an important distinction. Applicant?s services are provided to (and Applicant?s mark will only be seen by) travel agents and travel agencies. These are trained professionals in the travel industry who are knowledgeable in their field, take additional time to review services provided by different vendors, and whose expertise and experience are certified by their travel associations (such as Applicant and the three associations cited in the Examining Attorney?s Action). They are not at all likely to be confused by the marks and/or the services provided by Applicant, Registrant, and the other applicant. The Registrant and other applicant?s marks and/or services will be viewed by consumers, who, admittedly, are less sophisticated than travel agents and travel agencies. But, these less-sophisticated consumers are not exposed to Applicant?s mark and/or services. As noted above, Applicant?s mark and/or services are only directed to travel agents and travel agencies. Therefore, although the marks themselves can be seen as similar, the services offered under the marks will travel through entirely separate trade channels ? one of which (consumers) will never be exposed to Applicant?s mark, and the other of which (travel professionals) will not be confused. Based on the foregoing, the Examining Attorney?s refusal should be withdrawn and the application should proceed to publication. If the Examining Attorney still has concerns of a likelihood of confusion, Applicant is willing to delete from its description of services the phrase: ?membership club services in the nature of providing discounts to members in the field of travel?. This deletion will limit Applicant?s registration to its association services, which, clearly, do not conflict with the Registrant?s and other applicant?s services. Although Applicant is willing to make such deletion, Applicant does not believe it is necessary based on the foregoing arguments.

The owner's/holder's current attorney information: Brian J. Hundertmark. Brian J. Hundertmark of GARSON LAW LLC, is located at

      SUITE 650
      7910 WOODMONT AVENUE
      BETHESDA, Maryland 20814
      United States
      The phone number is 301-280-2700.
      The fax number is 301-280-2707.
      The email address is trademarks@garsonlaw.com

The owner's/holder's proposed attorney information: Brian J. Hundertmark. Brian J. Hundertmark of Offit Kurman P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      9th Floor
      4800 Montgomery Lane
      Bethesda, Maryland 20814
      United States
      The phone number is 240-507-1750.
      The fax number is 240-507-1735.
      The email address is brian.hundertmark@offitkurman.com

Brian J. Hundertmark 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.Correspondence Information (current):
      BRIAN J. HUNDERTMARK
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@garsonlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Brian J. Hundertmark
      PRIMARY EMAIL FOR CORRESPONDENCE: brian.hundertmark@offitkurman.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alison.coombs@offitkurman.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Brian J. Hundertmark/     Date: 02/17/2020
Signatory's Name: Brian J. Hundertmark
Signatory's Position: Attorney of Record, Maryland Bar Member

Signatory's Phone Number: 240-507-1750

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 J. HUNDERTMARK
   GARSON LAW LLC
   SUITE 650
   7910 WOODMONT AVENUE
   BETHESDA, Maryland 20814
Mailing Address:    Brian J. Hundertmark
   Offit Kurman P.A.
   9th Floor
   4800 Montgomery Lane
   Bethesda, Maryland 20814
        
Serial Number: 88452655
Internet Transmission Date: Mon Feb 17 15:14:01 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002171514012
02528-88452655-710539a866ff48667aedd49b6
6197163f004e3e5a75f4f59b28116a3f4965fc14
-N/A-N/A-20200217150550287666