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. 88488830 BLACKDOT(Standard Characters, see http://uspto.report/TM/88488830/mark.png) has been amended as follows:

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

U.S. Registration No. 3307355 The Trademark Examiner has refused registration of the present application because of a likelihood of confusion with the mark in U.S. Registration No. 3307355 (the ?Registration 3307355?). Registration 3307355 is owned by Black Dot Holdings, LLC, a Delaware limited liability company, and Black Dot Holdings, LLC is a wholly- owned subsidiary of the applicant. Because the applicant indirectly owns 100% of Registration 3307355, the applicant respectfully requests that the Trademark Examiner withdraw the likelihood of confusion rejection with respect to Registration 3307355. To clarify a potential question, in the application for Registration 3307355, Heritage Resources, LP was listed as an active member of Black Dot Holdings, LLC. Prior to the application filing date of the present application, (a) Heritage Resources, LP converted to Heritage Resources Holdings LLC, a Delaware limited liability company; (b) Heritage Resources Holdings LLC changed its name to Heritage Resources Group LLC; (c) Heritage Resources Group LLC converted to Heritage Resources Group, Inc., a Delaware corporation; and (d) Heritage Resources Group, Inc. transferred its entire ownership interest in Black Dot Holdings, LLC to the applicant. U.S. Registration Nos. 2073189 and 5436177, and Application Serial No. 88455352 The Trademark Examiner also refused registration of the applied-for mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 2073189 and 5436177. In addition, the Examiner noted that if the mark in Application Serial No. 88455352 registers, applicant?s mark may be refused registration based on a likelihood of confusion with the mark in the prior-filed application. In addition to the likelihood of confusions issues, the Examiner has requested that applicant make certain changes to the descriptions of services in its application. The applicant is negotiating with the owners of each of the blocking registrations and the prior-filed application for a Coexistence Agreement, and has filed a Notice of Opposition with respect to Application Serial No. 88455352. Some of these activities may result in changes to the descriptions of goods and services in applicant?s application. Applicant could make the changes requested by the Examiner to the descriptions of services now; however, this would complicate ongoing negotiations with the multiple parties and resolution of the opposition proceeding. Applicant believes it will be more efficient to reduce the number of changes to the descriptions of goods and services and reduce the number of responses to Office Actions by responding to the remaining rejections after negotiations with the owners of the blocking marks are completed. In light of the foregoing, we respectfully request the Examiner suspend further work on the present application until it is finally determined whether Application Serial No. 88455352 will register.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: BLVCKDOT, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      27271 Las Ramblas, Suite 300
      Mission Viejo, California 92691
      United States

Proposed: BLVCKDOT, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      27271 Las Ramblas, Suite 300
      Mission Viejo, California 92691
      United States
      Email Address: drebeor@blvckdot.com

The owner's/holder's current attorney information: Philip C. Schroeder. Philip C. Schroeder of BUCHALTER, is located at

      18400 VON KARMAN AVE., SUITE 800
      IRVINE, California 92612
      United States
The docket/reference number is B0092-5004.
      The phone number is 949-224-6241.
      The email address is trademark@buchalter.com

The owner's/holder's proposed attorney information: Philip C. Schroeder. Philip C. Schroeder of BUCHALTER, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      18400 VON KARMAN AVE., SUITE 800
      IRVINE, California 92612
      United States
The docket/reference number is B0092-5004.
      The phone number is 949-224-6241.
      The email address is ipdocket@buchalter.com

Philip C. Schroeder 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):
      PHILIP C. SCHROEDER
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pschroeder@buchalter.com

The docket/reference number is B0092-5004.
Correspondence Information (proposed):
      Philip C. Schroeder
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pschroeder@buchalter.com

The docket/reference number is B0092-5004.

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)
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: /Daniel Rebeor/      Date: 03/23/2020
Signatory's Name: Daniel E. Rebeor
Signatory's Position: General Counsel
Signatory's Phone Number: 8585683967


Response Signature
Signature: /Philip C. Schroeder/     Date: 03/23/2020
Signatory's Name: Philip C. Schroeder
Signatory's Position: Attorney of record, CA bar member

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:    PHILIP C. SCHROEDER
   BUCHALTER
   
   18400 VON KARMAN AVE., SUITE 800
   IRVINE, California 92612
Mailing Address:    Philip C. Schroeder
   BUCHALTER
   18400 VON KARMAN AVE., SUITE 800
   IRVINE, California 92612
        
Serial Number: 88488830
Internet Transmission Date: Mon Mar 23 19:14:26 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200323191426703
724-88488830-710a5fe311d4a2e9c43cc2635a2
74ae5a03f3246b3e09ab92e43a3f5952e5f53-N/
A-N/A-20200323185510620552