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. 88490426 ALIEN GEAR(Standard Characters, see http://uspto.report/TM/88490426/mark.png) has been amended as follows:

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

The Office cites a single reference to support its 2(d) likelihood of confusion initial rejection in its October 10, 2019 Office Action. Because that reference was not renewed and is no longer active, Applicant respectfully requests removal of the 2(d) rejection. The referenced registration, Registration No. 2046619 was due for renewal March 18, 2017, twenty years from its registration date of March 18, 1997. No Section 8 and 9 Declarations were filed at that time, or within the given 6 month grace period. For that reason, such registration must be considered dead and cannot stand as the basis for a 2(d) rejection.

For efficiency, Applicant will reserve the right to assert its additional arguments related to the substance of the likelihood of confusion, if for some reason the failure to renew does not alleviate the issue. Applicant responds to the additional issues raised in the Office Action within the appropriate form sections of this response.

Should the Examiner find any remaining issues after review of this Response, and should the Examiner believe such issues can be resolved informally through a telephone call or email, Applicant makes itself available at any time through its counsel of record.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 011 for flashlights; tactical flashlights; flashlight holders; flashlight pouches
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: flashlights; tactical flashlights; flashlight holders; flashlight pouches; pouches specifically adapted to hold flashlightsClass 011 for flashlights; tactical flashlights; flashlight holders; pouches specifically adapted to hold flashlights
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: Tedder Industries, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4411 W. Riverbend Ave.
      Post Falls, Idaho 83854
      United States

Proposed: Tedder Industries, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4411 W. Riverbend Ave.
      Post Falls, Idaho 83854
      United States
      Email Address: tmclient@randalldanskin.com

The owner's/holder's current attorney information: Shamus T. O'Doherty. Shamus T. O'Doherty of RANDALL | DANSKIN PS, is located at

      SUITE 1500
      601 W. RIVERSIDE
      SPOKANE, Washington 99201
      United States
The docket/reference number is 23578-43.
      The phone number is 509-747-2052.
      The fax number is 5096242528.
      The email address is sto@randalldanskin.com

The owner's/holder's proposed attorney information: Shamus T. O'Doherty. Other appointed attorneys are William A. Jeckle; James E. Lake; Marcellus A. Chase. Shamus T. O'Doherty of RANDALL | DANSKIN PS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 1500
      601 W. RIVERSIDE
      SPOKANE, Washington 99201
      United States
The docket/reference number is 23578-43.
      The phone number is 509-747-2052.
      The fax number is 5096242528.
      The email address is sto@randalldanskin.com

Shamus T. O'Doherty 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):
      SHAMUS T. O'DOHERTY
      PRIMARY EMAIL FOR CORRESPONDENCE: sto@randalldanskin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ip@randalldanskin.com

The docket/reference number is 23578-43.
Correspondence Information (proposed):
      Shamus T. O'Doherty
      PRIMARY EMAIL FOR CORRESPONDENCE: sto@randalldanskin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ip@randalldanskin.com

The docket/reference number is 23578-43.

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
Disclaimer
No claim is made to the exclusive right to use GEAR apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Shamus T. O'Doherty/     Date: 03/30/2020
Signatory's Name: Shamus T. O'Doherty
Signatory's Position: Attorney of record, Washington bar member

Signatory's Phone Number: (509)747-2052

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:    SHAMUS T. O'DOHERTY
   RANDALL | DANSKIN PS
   SUITE 1500
   601 W. RIVERSIDE
   SPOKANE, Washington 99201
Mailing Address:    Shamus T. O'Doherty
   RANDALL | DANSKIN PS
   SUITE 1500
   601 W. RIVERSIDE
   SPOKANE, Washington 99201
        
Serial Number: 88490426
Internet Transmission Date: Mon Mar 30 18:18:04 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200330181804260
374-88490426-710e798c1b3f9dd1dbe5d185586
25e85b0e922cb5f3e45f94ec603c493985ba66-N
/A-N/A-20200330180445993906