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. 88457007 TOLEDO (Stylized and/or with Design, see http://uspto.report/TM/88457007/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for education-related entertainment services, namely, conducting and sponsoring collegiate athletic competitions and activities; entertainment services, namely, organizing collegiate sporting events, namely, football, basketball, baseball, softball, cross country, golf, tennis, soccer, swimming and diving, track and field, and volleyball games; lectures and exhibitions in the field of sporting events; recreation programs, namely, intramural sports and fitness classes
Original Filing Basis:
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.

Proposed:
Tracked Text Description: education-related entertainment services, namely, conducting and sponsoring collegiate athletic competitions and activities; education-related entertainment service, namely, conducting collegiate athletic competitions and activities related thereto; entertainment services, namely, organizing collegiate sporting events, namely, football, basketball, baseball, softball, cross country, golf, tennis, soccer, swimming and diving, track and field, and volleyball games; entertainment services, namely, organizing collegiate sporting events, namely, football, basketball, baseball, softball, cross country, golf, tennis, soccer, swimming and diving, hockey, track and field, and volleyball games; lectures and exhibitions in the field of sporting events; entertainment and educational services, namely, presenting lectures and organizing exhibitions in the field of sporting events; recreation programs, namely, intramural sports and fitness classes; educational and entertainment services, namely, conducting programs featuring recreational activities, namely, intramural sports and fitness classesClass 041 for education-related entertainment service, namely, conducting collegiate athletic competitions and activities related thereto; entertainment services, namely, organizing collegiate sporting events, namely, football, basketball, baseball, softball, cross country, golf, tennis, soccer, swimming and diving, hockey, track and field, and volleyball games; entertainment and educational services, namely, presenting lectures and organizing exhibitions in the field of sporting events; educational and entertainment services, namely, conducting programs featuring recreational activities, namely, intramural sports and fitness classes
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.

The applicant's current attorney information: Charles R. Schaub. Charles R. Schaub of SCHAFFER, SCHAUB & MARRIOTT , LTD., is located at

      1115 ADAMS ST., P.O. BOX 916
      TOLEDO, Ohio 43697-0916
      US
The docket/reference number is 19-175.

The phone number is 419-243-1294.

The fax number is 419 243-8502.

The email address is ssm@ssm-law.com

The applicants proposed attorney information: Charles R. Schaub. Other appointed attorneys are Carl A. Schaffer, Christopher D. Marriott and Patrick P. Pacella. Charles R. Schaub of SCHAFFER, SCHAUB & MARRIOTT , LTD., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1115 ADAMS ST., P.O. BOX 916
      TOLEDO, Ohio 43697-0916
      United States
The docket/reference number is 19-175.

The phone number is 419-243-1294.

The fax number is 419 243-8502.

The email address is ssm@ssm-law.com

Charles R. Schaub 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: CHARLES R. SCHAUB. CHARLES R. SCHAUB of SCHAFFER, SCHAUB & MARRIOTT , LTD., is located at

      1115 ADAMS ST., P.O. BOX 916
      TOLEDO, Ohio 43697-0916
      US
The docket/reference number is 19-175.

The phone number is 419-243-1294.

The fax number is 419 243-8502.

The email address is ssm@ssm-law.com; uspto@dockettrak.com

The applicants proposed correspondence information: Charles R. Schaub. Charles R. Schaub of SCHAFFER, SCHAUB & MARRIOTT , LTD., is located at

      1115 ADAMS ST., P.O. BOX 916
      TOLEDO, Ohio 43697-0916
      United States
The docket/reference number is 19-175.

The phone number is 419-243-1294.

The fax number is 419 243-8502.

The email address is ssm@ssm-law.com; uspto@dockettrak.com

ADDITIONAL STATEMENTS
Color Claim
The color(s) blue, gold, gray and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of a blue male figure appearing to fly with outstretched arms. The figure has a blue, gray, and white helmet with gold circles on each side and a gold triangular design outlined in blue on top. The figure has gold shoulder patches on each shoulder, with white inside the patch on the right side and blue inside the patch on the left side, gold and white gloves outlined in blue, a gold rocket design on the front above the gold word "TOLEDO," and stylized gray contrails outlined first in blue and then in gray. Other than as described above, the color white shown on the drawing represents background areas and is not part of the mark.

Miscellaneous Statement
The gold in Applicant's mark is identified as gold PMS 116.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
TOLEDO has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3373144


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: /Charles R. Schaub/      Date: 02/03/2020
Signatory's Name: Charles R. Schaub
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 419 243-1294


Response Signature
Signature: /Charles R. Schaub/     Date: 02/03/2020
Signatory's Name: Charles R. Schaub
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 419 243-1294

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:    CHARLES R. SCHAUB
   SCHAFFER, SCHAUB & MARRIOTT , LTD.
   
   1115 ADAMS ST., P.O. BOX 916
   TOLEDO, Ohio 43697-0916
Mailing Address:    Charles R. Schaub
   SCHAFFER, SCHAUB & MARRIOTT , LTD.
   1115 ADAMS ST., P.O. BOX 916
   TOLEDO, Ohio 43697-0916
        
Serial Number: 88457007
Internet Transmission Date: Mon Feb 03 12:57:54 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200203125754
257086-88457007-700bd8539e71c4f2ba872769
c9e6a1074fd4359911631e5c233953b43b5f7b6e
7f1-N/A-N/A-20200203124143871213