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. 88490076 WANDERERS(Standard Characters, see http://uspto.report/TM/88490076/mark.png) has been amended as follows:

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

In her Office Action, the Examining Attorney stated: WITH RESPECT TO REGISTRATION NO. 5736988, THE APPLIED-FOR MARK CONTAINS THE WORDING "WALLETS INCLUDING LEATHER WALLETS" WHICH IS BROAD ENOUGH TO ENCOMPASS THE GOODS IN THE CITED REGISTRATION OF "WALLETS." Applicant hereby agrees to delete "wallets including leather wallets" from its application * ONLY IF * the Examining Attorney will then withdraw the 2(d) refusal based on Registration No. 5736988.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Sunglasses
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: Sunglasses; carrying bags, namely bags and cases for eyeglasses and sunglassesClass 009 for Sunglasses; carrying bags, namely bags and cases for eyeglasses and sunglasses
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:
Current: Class 018 for Luggage and carrying bags; bags made of leather; handbags including leather handbags made of leather; leather bags; briefcases including leather briefcases; leather cases; purses including leather purses; luggage including leather luggage and leather travelling suitcases; wallets including leather wallets; articles of luggage being bags; bags for toiletry kits; bags for transport of clothes; duffel bags; luggage bags; toiletry bags; travel bags; travelling bags; work bags; tote bags; travel bags
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: Luggage and carrying bags; Luggage and carrying bags, namely all-purpose carrying bags; bags made of leather; handbags including leather handbags made of leather; handbags including handbags made of leather; leather bags; briefcases including leather briefcases; leather cases; purses including leather purses; luggage including leather luggage and leather travelling suitcases; wallets including leather wallets; articles of luggage being bags; bags for toiletry kits; bags for toiletry kits sold empty; bags for transport of clothes; bags for transport of clothes, namely garment travel bags; duffel bags; luggage bags; toiletry bags; toiletry bags sold empty; travel bags; travelling bags; work bags; work bags, namely briefcases, portfolios and satchels; tote bags; travel bagsClass 018 for Luggage and carrying bags, namely all-purpose carrying bags; bags made of leather; handbags including handbags made of leather; leather bags; briefcases including leather briefcases; leather cases; purses including leather purses; luggage including leather luggage and leather travelling suitcases; wallets including leather wallets; articles of luggage being bags; bags for toiletry kits sold empty; bags for transport of clothes, namely garment travel bags; duffel bags; luggage bags; toiletry bags sold empty; travel bags; travelling bags; work bags, namely briefcases, portfolios and satchels; tote bags; travel bags
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:
Current: Class 025 for Clothing, footwear, headgear
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: Clothing, footwear, headgear; Clothing, namely, jackets, coats, t-shirts, shirts, tops, blouses, jerseys, sweaters, cardigans, pullovers, vests, ponchos, wraps, neckwear, gloves and clothing accessories, namely, scarves, shawls, sashes, clothing wraps, gloves, ties and belts; footwear; headgear, namely, hats, caps and visorsClass 025 for Clothing, namely, jackets, coats, t-shirts, shirts, tops, blouses, jerseys, sweaters, cardigans, pullovers, vests, ponchos, wraps, neckwear, gloves and clothing accessories, namely, scarves, shawls, sashes, clothing wraps, gloves, ties and belts; footwear; headgear, namely, hats, caps and visors
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: The Wanderers Travel Co. Pty Ltd a(n) proprietary limited company (p/l or pty. ltd.), legally organized under the laws of Australia, having an address of
      3/154 Flora Street
      Sutherland, NSW2232
      Australia

Proposed: The Wanderers Travel Co. Pty Ltd, proprietary limited company (p/l or pty. ltd.) legally organized under the laws of Australia, having an address of
      3/154 Flora Street
      Sutherland, NSW2232
      Australia
      Email Address: mbftm@michaelbest.com

The owner's/holder's current attorney information: Laura M. Konkel. Laura M. Konkel of MICHAEL BEST & FRIEDRICH LLP, is located at

      100 EAST WISCONSIN AVENUE, SUITE 3300
      MILWAUKEE, Wisconsin 53202
      United States
The docket/reference number is 214797-9001.
      The phone number is 608-257-3501.
      The fax number is 608-283-2275.
      The email address is mkeipdocket@michaelbest.com

The owner's/holder's proposed attorney information: Laura M. Konkel. Other appointed attorneys are all other attorneys of Michael Best & Friedrich LLP. Laura M. Konkel of MICHAEL BEST & FRIEDRICH 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

      100 EAST WISCONSIN AVENUE, SUITE 3300
      MILWAUKEE, Wisconsin 53202
      United States
The docket/reference number is 214797-9001.
      The phone number is 608-257-3501.
      The fax number is 608-283-2275.
      The email address is mkeipdocket@michaelbest.com

Laura M. Konkel 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):
      LAURA M. KONKEL
      PRIMARY EMAIL FOR CORRESPONDENCE: mkeipdocket@michaelbest.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lmkonkel@michaelbest.com

The docket/reference number is 214797-9001.
Correspondence Information (proposed):
      Laura M. Konkel
      PRIMARY EMAIL FOR CORRESPONDENCE: mkeipdocket@michaelbest.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lmkonkel@michaelbest.com

The docket/reference number is 214797-9001.

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)
Response Signature
Signature: /Laura M. Konkel/     Date: 03/14/2020
Signatory's Name: Laura M. Konkel
Signatory's Position: Attorney of Record

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:    LAURA M. KONKEL
   MICHAEL BEST & FRIEDRICH LLP
   
   100 EAST WISCONSIN AVENUE, SUITE 3300
   MILWAUKEE, Wisconsin 53202
Mailing Address:    Laura M. Konkel
   MICHAEL BEST & FRIEDRICH LLP
   100 EAST WISCONSIN AVENUE, SUITE 3300
   MILWAUKEE, Wisconsin 53202
        
Serial Number: 88490076
Internet Transmission Date: Sat Mar 14 20:29:07 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202003142029073
90962-88490076-710fffcd83d287a9c616cd725
2031434863cbc3638f6337860cd111cb57c707cd
1-N/A-N/A-20200314202216854976