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. 88489575 HAMILTON(Standard Characters, see http://uspto.report/TM/88489575/mark.png) has been amended as follows:

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

See Arguments attached to Evidence section.

EVIDENCE
Evidence in the nature of Arguments against refusals and third party registrations. has been attached.
Original PDF file:
evi_216759226-20200324104657119925_._HAMILTON_ARGUMENTS.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_216759226-20200324104657119925_._HAMILTON_ATTACHMENTS.pdf
Converted PDF file(s) ( 17 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for computers worn on the wrist; smartwatches; software
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: computers worn on the wrist; smartwatches; software; computer software for computers worn on the wrist and smartwatches, namely, downloadable software for recording, organizing, receiving and transmitting alerts, messages, emails, reminders and text, data, audio, image and digital filesClass 009 for computers worn on the wrist; smartwatches; computer software for computers worn on the wrist and smartwatches, namely, downloadable software for recording, organizing, receiving and transmitting alerts, messages, emails, reminders and text, data, audio, image and digital files
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: Hamilton International AG (Hamilton International SA) Hamilton International Ltd), a corporation of Switzerland, having an address of
      Mattenstrasse 149
      Biel/Bienne, 2503
      Switzerland

Proposed: Hamilton International AG (Hamilton International SA) Hamilton International Ltd), a corporation of Switzerland, having an address of
      Mattenstrasse 149
      Biel/Bienne, 2503
      Switzerland
      Email Address: uspto@lawabel.com
Correspondence Information (current):
      Marie Anne Mastrovito
      PRIMARY EMAIL FOR CORRESPONDENCE: MAMastrovito@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@lawabel.com
Correspondence Information (proposed):
      Marie Anne Mastrovito
      PRIMARY EMAIL FOR CORRESPONDENCE: MAMastrovito@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@lawabel.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).

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-216759226-104657119_._HAMILTON_PRIOR_REG.pdf
Converted PDF file(s) ( 3 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3

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). 5168258


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: /MAMastrovito/      Date: 03/24/2020
Signatory's Name: Marie Anne Mastrovito
Signatory's Position: Attorney of Record
Signatory's Phone Number: (212) 949-9022


Response Signature
Signature: /MAMastrovito/     Date: 03/24/2020
Signatory's Name: Marie Anne Mastrovito
Signatory's Position: Attorney of Record

Signatory's Phone Number: (212) 949-9022

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:    Marie Anne Mastrovito
   ABELMAN FRAYNE & SCHWAB
   
   666 Third Avenue
   New York, New York 10017
Mailing Address:    Marie Anne Mastrovito
   ABELMAN FRAYNE & SCHWAB
   666 Third Avenue
   New York, New York 10017
        
Serial Number: 88489575
Internet Transmission Date: Tue Mar 24 10:56:49 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200324105649586
136-88489575-710e2421f67729721953b7ce0e1
e862bc3d9c75b18c4882194ec8b44bfdf7058-N/
A-N/A-20200324104657119925