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. 88486143 KUBOTA (Stylized and/or with Design, see http://uspto.report/TM/88486143/mark.png) has been amended as follows:

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

This response is in reply to the Office Action dated September 16, 2019. Applicant has carefully considered the remarks of the Examining Attorney and responds as follows.

Refusal Under Section 2(e)(4)

The Office Action refuses registration of “KUBOTA” (“Applicant’s Mark”) under Section 2(e)(4) of the Trademark Act. Specifically, the Office Action alleges that Applicant’s Mark is “primarily merely a surname.” Applicant respectfully requests reconsideration and withdrawal of the refusal in view of the following comments and remarks.

The KUBOTA mark is derived from the surname of its founder, Mr. Gonshiro Kubota, going back to 1890. In order to overcome this refusal, Applicant has entered a claim of acquired distinctiveness of the KUBOTA mark, and supplies as evidence examples of ownership of numerous other trademark registrations for KUBOTA-containing marks, namely, U.S. Trademark Registration Nos. 4,156,148, 4,483,421, 3,107,487, 2,916,907, 3,018,224, 2,793,694, 2,837,680, 1,775,620 and 922,330, all of which are attached to this Response. As such, removal of the refusal is respectfully requested.

Identification of Goods

The Office Action alleges that the identification of goods for International Class 11 is too broad and “could include goods in other international classes.” Applicant has amended the identification of goods in International Classes 007 and 011, in part, as suggested by the Examining Attorney. In particular, Applicant amends its good description as follows:

(new) International Class 007:

Industrial rice washing machines; Industrial rice and vinegar mixing machines

International Class 011:

Industrial rice cookers; electric cooking pots for industrial purpose; electric roasters for industrial purposes; commercial cooking ovens; freezing machines and apparatus, namely, electric freezers; drying apparatus, namely, crop drying machines; household electrothermic appliances, namely, electromagnetic induction cookers for household purposes; refrigerating machines and apparatus, namely, refrigerating cabinets.

Accordingly, Applicant submits that the identification of goods is not too broad, and respectfully requests reconsideration of the identification of the wording of the identification of goods as too broad.

Multiple-Class Requirements

Finally, the Office Action indicates that fees must be submitted for one additional class. Applicant has submitted the fee and, as such, submits that the multiple-class requirements are satisfied.

In light of these amendments, Applicant requests publication of this application.

Respectfully submitted,

THE WEBB LAW FIRM

/CRD/

Cecilia R. Dickson

Attorney of Record, PA Bar Member

412-471-8815

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 011 for Industrial rice cookers; industrial rice washing machines; industrial rice and vinegar mixing machines; electric cooking pots for industrial purpose; electric roasters for industrial purposes; commercial cooking ovens; freezing machines and apparatus; drying apparatus; household electrothermic appliances; refrigerating machines and apparatus
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: Industrial rice cookers; industrial rice washing machines; electric cooking pots for industrial purpose; industrial rice and vinegar mixing machines; electric roasters for industrial purposes; commercial cooking ovens; freezing machines and apparatus, namely, electric freezers; drying apparatus, namely, crop drying machines; freezing machines and apparatus; household electrothermic appliances, namely, electromagnetic induction cookers for household purposes; drying apparatus; refrigerating machines and apparatus, namely, refrigerating cabinets.; household electrothermic appliances; refrigerating machines and apparatusClass 011 for Industrial rice cookers; electric cooking pots for industrial purpose; electric roasters for industrial purposes; commercial cooking ovens; freezing machines and apparatus, namely, electric freezers; drying apparatus, namely, crop drying machines; household electrothermic appliances, namely, electromagnetic induction cookers for household purposes; refrigerating machines and apparatus, namely, refrigerating cabinets.
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 hereby adds the following class of goods/services to the application:
New: Class 007 for Industrial rice washing machines; Industrial rice and vinegar mixing machines
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Kubota Corporation, a corporation of Japan, having an address of
      2-47, Shikitsuhigashi 1-chome
      Naniwa-ku, Osaka, 5568601
      Japan

Proposed: Kubota Corporation, a corporation of Japan, having an address of
      2-47, Shikitsuhigashi 1-chome
      Naniwa-ku, Osaka, 5568601
      Japan
      Email Address: katsumasa.tanaka@kubota.com
Correspondence Information (current):
      Cecilia R. Dickson
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@webblaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 9223-1902503.
Correspondence Information (proposed):
      Cecilia R. Dickson
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@webblaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 9223-1902503.

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).

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.

Original PDF file:
e2f-2-38107150106-150410590_._4156148.pdf
Converted PDF file(s) ( 10 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
Original PDF file:
e2f-1-38107150106-150410590_._4483421.pdf
Converted PDF file(s) ( 12 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
Original PDF file:
e2f-1-38107150106-150410590_._3107487.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._2916907.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._3018224.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._2793694.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._2837680.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._1775620.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1
Original PDF file:
e2f-38107150106-150410590_._922330.pdf
Converted PDF file(s) ( 1 page)
2(f) evidence-1

SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark 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). 4,156,148, 4,483,421, 3,107,487, 2,916,907, 3,018,224, 2,793,694, 2,837,680, 1,775,620 and 922,330


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: /CRD/      Date: 03/13/2020
Signatory's Name: Cecilia R. Dickson REG NO. 89348
Signatory's Position: Attorney of Record, PA Bar Member
Signatory's Phone Number: 4124718815


Response Signature
Signature: /CRD/     Date: 03/13/2020
Signatory's Name: Cecilia R. Dickson REG NO. 89348
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 4124718815

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:    Cecilia R. Dickson
   The Webb Law Firm
   One Gateway Center
   420 Fort Duquesne Boulevard, Suite 1200
   Pittsburgh, Pennsylvania 15222
Mailing Address:    Cecilia R. Dickson
   The Webb Law Firm
   One Gateway Center
   420 Fort Duquesne Boulevard, Suite 1200
   Pittsburgh, Pennsylvania 15222
        
RAM Sale Number: 88486143
RAM Accounting Date: 03/13/2020
        
Serial Number: 88486143
Internet Transmission Date: Fri Mar 13 12:16:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202003131216237
12174-88486143-71079b9ad7bde256442b3cb25
e9d79a613d4294baccde01743b422b17bf2f7426
9-CC-16223110-20200313121415882823