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. 88482105 RBG (Stylized and/or with Design, see http://uspto.report/TM/88482105/mark.png) has been amended as follows:

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

In the office action issued on July 20, 2019, examining attorney cited prior filed application 88340087 as a potential barrier to registration of the subject application. The cited application was abandoned on December 4, 2019 as shown in the attached TSDR report. Applicant requests that this citation be withdrawn.

EVIDENCE
Evidence in the nature of TSDR report for US Serial Number 88340087. has been attached.
Original PDF file:
evi_97965617-20200103145112889750_._88340087_-_PLANK_LIKE_RBG.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for compact discs featuring music; computer game programs; computer software for organizing and viewing digital images and photographs; computer software for transmitting graphics to mobile telephones; computer software for enhancing audio visual capabilities of multimedia applications for integration of text, audio, graphics, still images and moving pictures; computer operating system; computer software for editing text files, audio files, video files, image files and websites; computer software for creating and editing computer graphics; computer software for assisting developers in creating program code for use in multiple application programs; computer software used for backing up electronic data; video game software; computer software for displaying orders and driver locations on maps; computer software applications for purchasing, streaming of music, purchasing, streaming of videos that may be downloaded from a global computer network; computer software applications for providing information in the fields of music, finance, health and fitness, lifestyle, medicine, travelling, sports, entertainment, namely, music, TV, film and radio entertainment and economy that may be downloaded from a global computer network; computer software applications for navigation, and playing and purchasing video games, all for mobile phones and tablets that may be downloaded from a global computer network; external computer hard drives; glasses for sports; magnets for industrial purposes; interactive multimedia computer game programs; prerecorded magnetic data carriers featuring computer software in the field of electronic games, entertainment, music, culture, sports, namely, computer software that allows transmission of graphics to mobile telephones, computer software to enhance audio visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures; articles of protective clothing with built in armor for protection against accident or injury for use in motorcycling; apertometers; compact discs featuring computer games; DVDs featuring music; laser discs featuring movies and video games; X-Y plotters; protective face-shields for protective helmets; protective ear covering shields, protective ballistic resistant and blast resistant body armor, clothing and garments; safety harnesses for auto racing; monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; signaling buoys; SIM cards; television receivers; time switches; wearable activity trackers; audio speakers; audio tape recorders; audiovisual receivers; barometers; bicycle helmets; binoculars; blank audio tapes; blank diskettes; blank optical disks; blank USB flash drives; blank video tapes; calculators; camcorders; camera shutters; cameras; cases for mobile phones; cinematographic cameras; computer operating programs; computers; decorative magnets; digital cameras; digital video recorders; directional compasses; DVD recorders; electric transformers; electrical cables; electrical wireselectronic notice boards; electronic warning bells; eye glasses; flight simulators; football helmets; fridge magnets; global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices; goggles for sports; headphones; loudspeakers; luminous signs; magnifying glasses; measuring cups; measuring spoons; measuring tapes; mechanisms for coin-operated apparatus; mobile telephones; movie projectors; MP3 players; personal security alarms; personal stereos; photocopiers; photometers; portable radios; protective eyeglasses; protective helmets for sports; recorded computer operating programs; safety goggles; safety markers; smartglasses; smartwatches; spectacles; sunglasses; telescopes; televisions; vehicle drive training simulators; video cassette recorders; video monitors; video projectors; video tape recorders; computer game software, recorded; computer programs, downloadable; trackballs; computer game software, downloadable
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: compact discs featuring music; computer game programs; recorded computer game programs; computer software for organizing and viewing digital images and photographs; downloadable computer game programs; computer software for transmitting graphics to mobile telephones; downloadable computer software for organizing and viewing digital images and photographs; computer software for enhancing audio visual capabilities of multimedia applications for integration of text, audio, graphics, still images and moving pictures; downloadable computer software for transmitting graphics to mobile telephones; downloadable computer software for enhancing audio visual capabilities of multimedia applications for integration of text, audio, graphics, still images and moving pictures; computer software for editing text files, audio files, video files, image files and websites; computer operating system; computer software for creating and editing computer graphics; downloadable computer software for editing text files, audio files, video files, image files and websites; computer software for assisting developers in creating program code for use in multiple application programs; recorded computer programs for editing images, sound and video; computer software used for backing up electronic data; downloadable computer software for creating and editing computer graphics; video game software; downloadable computer software for assisting developers in creating program code for use in multiple application programs; computer software for displaying orders and driver locations on maps; downloadable computer software used for backing up electronic data; computer software applications for purchasing, streaming of music, purchasing, streaming of videos that may be downloaded from a global computer network; recorded video game software; downloadable video game software; downloadable computer software for displaying orders and driver locations on maps; downloadable computer software applications for purchasing, streaming of music, purchasing, streaming of videos that may be downloaded from a global computer network; computer software applications for providing information in the fields of music, finance, health and fitness, lifestyle, medicine, travelling, sports, entertainment, namely, music, TV, film and radio entertainment and economy that may be downloaded from a global computer network; computer software applications for navigation, and playing and purchasing video games, all for mobile phones and tablets that may be downloaded from a global computer network; interactive multimedia computer game programs; external computer hard drives; prerecorded magnetic data carriers featuring computer software in the field of electronic games, entertainment, music, culture, sports, namely, computer software that allows transmission of graphics to mobile telephones, computer software to enhance audio visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures; glasses for sports; magnets for industrial purposes; downloadable interactive multimedia computer game programs; prerecorded magnetic data carriers featuring computer software in the field of electronic games, entertainment, music, culture, and sports, namely, computer software that allows transmission of graphics to mobile telephones, and computer software to enhance audio visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures; articles of protective clothing with built in armor for protection against accident or injury for use in motorcycling; laser discs featuring movies and video games; apertometers; compact discs featuring computer games; DVDs featuring music; laser discs featuring movies in the field of electronic games, entertainment, music, culture and sports, and video games; X-Y plotters; protective face-shields for protective helmets; protective ear covering shields, protective ballistic resistant and blast resistant body armor, clothing and garments; safety harnesses for auto racing; monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; signaling buoys; SIM cards; television receivers; time switches; wearable activity trackers; audio speakers; audio tape recorders; audiovisual receivers; barometers; bicycle helmets; binoculars; blank audio tapes; blank diskettes; blank optical disks; blank USB flash drives; blank video tapes; calculators; camcorders; camera shutters; computer operating programs; cameras; cases for mobile phones; cinematographic cameras; downloadable computer operating programs; computers; decorative magnets; digital cameras; digital video recorders; directional compasses; electrical wireselectronic notice boards; DVD recorders; electric transformers; electrical cables; electrical wires; electronic notice boards; electronic warning bells; global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices; eye glasses; flight simulators; football helmets; fridge magnets; global positioning system (GPS) consisting of computers, downloadable computer software, transmitters, receivers, and network interface devices; goggles for sports; headphones; loudspeakers; luminous signs; magnifying glasses; measuring cups; measuring spoons; measuring tapes; mechanisms for coin-operated apparatus; mobile telephones; movie projectors; MP3 players; personal security alarms; personal stereos; photocopiers; photometers; portable radios; protective eyeglasses; protective helmets for sports; recorded computer operating programs; safety goggles; safety markers; smartglasses; smartwatches; spectacles; sunglasses; telescopes; televisions; vehicle drive training simulators; video cassette recorders; computer programs, downloadable; video monitors; video projectors; video tape recorders; computer game software, recorded; computer programs, downloadable, namely, downloadable computer programs for using the internet and the world wide web and downloadable computer programs for user interface design; trackballs; computer game software, downloadableClass 009 for compact discs featuring music; recorded computer game programs; downloadable computer game programs; downloadable computer software for organizing and viewing digital images and photographs; downloadable computer software for transmitting graphics to mobile telephones; downloadable computer software for enhancing audio visual capabilities of multimedia applications for integration of text, audio, graphics, still images and moving pictures; computer operating system; downloadable computer software for editing text files, audio files, video files, image files and websites; recorded computer programs for editing images, sound and video; downloadable computer software for creating and editing computer graphics; downloadable computer software for assisting developers in creating program code for use in multiple application programs; downloadable computer software used for backing up electronic data; recorded video game software; downloadable video game software; downloadable computer software for displaying orders and driver locations on maps; downloadable computer software applications for purchasing, streaming of music, purchasing, streaming of videos that may be downloaded from a global computer network; computer software applications for providing information in the fields of music, finance, health and fitness, lifestyle, medicine, travelling, sports, entertainment, namely, music, TV, film and radio entertainment and economy that may be downloaded from a global computer network; computer software applications for navigation, and playing and purchasing video games, all for mobile phones and tablets that may be downloaded from a global computer network; external computer hard drives; glasses for sports; magnets for industrial purposes; downloadable interactive multimedia computer game programs; prerecorded magnetic data carriers featuring computer software in the field of electronic games, entertainment, music, culture, and sports, namely, computer software that allows transmission of graphics to mobile telephones, and computer software to enhance audio visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures; articles of protective clothing with built in armor for protection against accident or injury for use in motorcycling; apertometers; compact discs featuring computer games; DVDs featuring music; laser discs featuring movies in the field of electronic games, entertainment, music, culture and sports, and video games; X-Y plotters; protective face-shields for protective helmets; protective ear covering shields, protective ballistic resistant and blast resistant body armor, clothing and garments; safety harnesses for auto racing; monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; signaling buoys; SIM cards; television receivers; time switches; wearable activity trackers; audio speakers; audio tape recorders; audiovisual receivers; barometers; bicycle helmets; binoculars; blank audio tapes; blank diskettes; blank optical disks; blank USB flash drives; blank video tapes; calculators; camcorders; camera shutters; cameras; cases for mobile phones; cinematographic cameras; downloadable computer operating programs; computers; decorative magnets; digital cameras; digital video recorders; directional compasses; DVD recorders; electric transformers; electrical cables; electrical wires; electronic notice boards; electronic warning bells; eye glasses; flight simulators; football helmets; fridge magnets; global positioning system (GPS) consisting of computers, downloadable computer software, transmitters, receivers, and network interface devices; goggles for sports; headphones; loudspeakers; luminous signs; magnifying glasses; measuring cups; measuring spoons; measuring tapes; mechanisms for coin-operated apparatus; mobile telephones; movie projectors; MP3 players; personal security alarms; personal stereos; photocopiers; photometers; portable radios; protective eyeglasses; protective helmets for sports; recorded computer operating programs; safety goggles; safety markers; smartglasses; smartwatches; spectacles; sunglasses; telescopes; televisions; vehicle drive training simulators; video cassette recorders; video monitors; video projectors; video tape recorders; computer game software, recorded; computer programs, downloadable, namely, downloadable computer programs for using the internet and the world wide web and downloadable computer programs for user interface design; trackballs; computer game software, downloadable
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 proposes to amend the following class of goods/services in the application:
Current: Class 018 for Cosmetic bags sold empty; reusable shopping bags; saddlery; all purpose sport bags; animal skins and hides; beach bags; book bags; briefcases; bum bags; carry-all bags; courier bags; duffel bags; handbags; leather and imitation leather; leather and imitation leather bags; luggage; luggage and trunks; messenger bags; overnight bags; pocket wallets; purses; school bags; school satchels; shoulder bags; suit carriers; umbrellas and parasols; walking sticks; wallets
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: Cosmetic bags sold empty; reusable shopping bags; saddlery; all purpose sport bags; animal skins and hides; beach bags; book bags; briefcases; bum bags; carry-all bags; courier bags; duffel bags; handbags; leather and imitation leather; leather and imitation leather bags; luggage; luggage and trunks; luggage and trunks being luggage; messenger bags; overnight bags; pocket wallets; purses; school bags; school satchels; shoulder bags; suit carriers; umbrellas and parasols; walking sticks; walletsClass 018 for Cosmetic bags sold empty; reusable shopping bags; saddlery; all purpose sport bags; animal skins and hides; beach bags; book bags; briefcases; bum bags; carry-all bags; courier bags; duffel bags; handbags; leather and imitation leather; leather and imitation leather bags; luggage; luggage and trunks being luggage; messenger bags; overnight bags; pocket wallets; purses; school bags; school satchels; shoulder bags; suit carriers; umbrellas and parasols; walking sticks; wallets
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 proposes to amend the following class of goods/services in the application:
Current: Class 025 for Infantwear; braces as suspenders; sports caps and hats; loungewear; footwear not for sports; t-shirts for children; sweatshirts for children; trousers for children; shirts for children; pajamas for children; sweaters for children; dresses for children; jackets for children; shoes for children; belts for clothing; cleats for attachment to sports shoes; jackets; outerwear, namely, coats, hats, gloves; waterproof footwear; footwear, namely, rubbers; athletic footwear for skiers, cross-country skiers and snowboarders; ski suits; ski trousers; athletic uniforms; athletic tights; athletic pants; athletic shirts; athletic shorts; athletic skirts; ski jackets; ski pants; ski gloves; athletic footwear; sun protective clothing, namely, sun protective shirts, sun protective pants; sun visors being headwear; anoraks; aprons; athletic footwear; beach footwear; blouses; climbing footwear; hats; headbands; jogging suits; money belts; pants; shirts; shorts; ski boots; skirts; sweaters; t-shirts; wind resistant jackets
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: Infantwear; braces as suspenders; sports caps and hats; loungewear; footwear not for sports; t-shirts for children; sweatshirts for children; trousers for children; shirts for children; pajamas for children; sweaters for children; dresses for children; jackets for children; shoes for children; belts for clothing; cleats for attachment to sports shoes; jackets; outerwear, namely, coats, hats, gloves; waterproof footwear; footwear, namely, rubbers; athletic footwear for skiers, cross-country skiers and snowboarders; ski suits; ski trousers; athletic uniforms; athletic tights; athletic pants; athletic shirts; athletic shorts; athletic skirts; ski jackets; ski pants; ski gloves; athletic footwear; sun protective clothing, namely, sun protective shirts, sun protective pants; sun visors being headwear; anoraks; aprons; athletic footwear; beach footwear; blouses; climbing footwear; hats; headbands; jogging suits; money belts; pants; shirts; shorts; ski boots; skirts; sweaters; t-shirts; wind resistant jacketsClass 025 for Infantwear; braces as suspenders; sports caps and hats; loungewear; footwear not for sports; t-shirts for children; sweatshirts for children; trousers for children; shirts for children; pajamas for children; sweaters for children; dresses for children; jackets for children; shoes for children; belts for clothing; cleats for attachment to sports shoes; jackets; outerwear, namely, coats, hats, gloves; waterproof footwear; footwear, namely, rubbers; athletic footwear for skiers, cross-country skiers and snowboarders; ski suits; ski trousers; athletic uniforms; athletic tights; athletic pants; athletic shirts; athletic shorts; athletic skirts; ski jackets; ski pants; ski gloves; athletic footwear; sun protective clothing, namely, sun protective shirts, sun protective pants; sun visors being headwear; anoraks; aprons; beach footwear; blouses; climbing footwear; hats; headbands; jogging suits; money belts; pants; shirts; shorts; ski boots; skirts; sweaters; t-shirts; wind resistant jackets
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: Joseph V. Myers III. Joseph V. Myers III of SEYFARTH SHAW LLP, is located at

      1075 PEACHTREE ST., #2500
      ATLANTA, Georgia 30309
      US

The phone number is 404-885-1500.

The email address is tmatlanta@seyfarth.com

The applicants proposed attorney information: Joseph V. Myers III. Other appointed attorneys are Julia K. Sutherland, Becki C. Lee, F. Richard Rimer, Jr., Stephen D. Lott, Lauren Gregory, Amy Abeloff. Joseph V. Myers III of SEYFARTH SHAW LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1075 Peachtree St., #2500
      Atlanta, Georgia 30309
      United States

The phone number is 404-885-1500.

The email address is tmatlanta@seyfarth.com

Joseph V. Myers III 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: JOSEPH V. MYERS III. JOSEPH V. MYERS III of SEYFARTH SHAW LLP, is located at

      1075 PEACHTREE ST., #2500
      ATLANTA, Georgia 30309
      US

The phone number is 404-885-1500.

The email address is tmatlanta@seyfarth.com

The applicants proposed correspondence information: Joseph V. Myers III. Joseph V. Myers III of SEYFARTH SHAW LLP, is located at

      1075 Peachtree St., #2500
      Atlanta, Georgia 30309
      United States

The phone number is 404-885-1500.

The email address is tmatlanta@seyfarth.com

SIGNATURE(S)
Response Signature
Signature: /frr/     Date: 01/07/2020
Signatory's Name: F. Richard Rimer, Jr.
Signatory's Position: Attorney of Record, Georgia Bar Member

Signatory's Phone Number: 4048851500

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:    JOSEPH V. MYERS III
   SEYFARTH SHAW LLP
   
   1075 PEACHTREE ST., #2500
   ATLANTA, Georgia 30309
Mailing Address:    Joseph V. Myers III
   SEYFARTH SHAW LLP
   1075 Peachtree St., #2500
   Atlanta, Georgia 30309
        
Serial Number: 88482105
Internet Transmission Date: Wed Jan 08 10:38:47 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202001081038470900
90-88482105-7009f9cd73cfca702f23c8ea763e
dfeb5bf407f5026a2111932e2ce2bd3e95b6a-N/
A-N/A-20200107092452307094