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. 88495841 AKRON SOCCER (Stylized and/or with Design, see http://uspto.report/TM/88495841/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: AKRON SOCCER (Stylized and/or with Design, see http://uspto.report/TM/88495841/mark.png)
Proposed: AKRON SOCCER (Stylized and/or with Design, see mark)
The color(s) white, blue and gold is/are claimed as a feature of the mark.
The mark consists of the all caps term "AKRON" in white, the initial A larger than the remainder, above the all caps term "SOCCER" in white, both "AKRON" and "SOCCER" being surrounded in blue, and the entire mark having a peripheral gold border. The white background outside of the mark is a transparent area and is not part of the mark.

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



OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: The University of Akron a(n) state university, legally organized under the laws of United States, having an address of
      302 E. Buchtel Common
      Akron, Ohio 44325
      United States

Proposed: The University of Akron, state university legally organized under the laws of Ohio, having an address of
      302 E. Buchtel Common
      Akron, Ohio 44325
      United States
      Email Address: pto@rennerkenner.com

The owner's/holder's current attorney information: Mark L. Weber. Mark L. Weber of RENNER, KENNER, GREIVE, BOBAK, TAYLOR & WEBER, is located at

      302 E. BUCHTEL COMMON
      AKRON, Ohio 44311
      United States
      The phone number is 330-376-1242.
      The fax number is 3303769646.
      The email address is master@rennerkenner.com

The owner's/holder's proposed attorney information: Mark L. Weber. Other appointed attorneys are Ray L. Weber (Reg. No. 26,519), Rodney L. Skoglund (36,010), Andrew B. Morton (Reg. No. 37,400), Mark L. Weber (Reg. No. 46,069), Laura J. Gentilcore (Reg. No. 54,116); Robert J. Diaz (Reg. No. 54,655); Alexander J. Johnson (Reg. No. 73,767); and Zachary J. Boehnlein (71,336). Mark L. Weber of RENNER, KENNER, GREIVE, BOBAK, TAYLOR & WEBER, 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 400
      106 S. Main St.
      AKRON, Ohio 44311
      United States
The docket/reference number is UOA.T.429.
      The phone number is 330-376-1242.
      The fax number is 3303769646.
      The email address is mlweber@rennerkenner.com

Mark L. Weber 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):
      MARK L. WEBER
      PRIMARY EMAIL FOR CORRESPONDENCE: master@rennerkenner.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mlweber@rennerkenner.com; mruhl@rennerkenner.com
Correspondence Information (proposed):
      Mark L. Weber
      PRIMARY EMAIL FOR CORRESPONDENCE: mlweber@rennerkenner.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mlweber@rennerkenner.com; mruhl@rennerkenner.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
Disclaimer
No claim is made to the exclusive right to use SOCCER apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2768792, 4967678, 4858240, and others.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
the mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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: /Mark L. Weber/      Date: 02/27/2020
Signatory's Name: Mark L. Weber
Signatory's Position: Attorney of Record, Ohio Bar Member
Signatory's Phone Number: 330-376-1242


Response Signature
Signature: /Mark L. Weber/     Date: 02/27/2020
Signatory's Name: Mark L. Weber
Signatory's Position: Attorney of Record, Ohio Bar Member

Signatory's Phone Number: 330-376-1242

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:    MARK L. WEBER
   RENNER, KENNER, GREIVE, BOBAK, TAYLOR & WEBER
   
   302 E. BUCHTEL COMMON
   AKRON, Ohio 44311
Mailing Address:    Mark L. Weber
   RENNER, KENNER, GREIVE, BOBAK, TAYLOR & WEBER
   Suite 400
   106 S. Main St.
   AKRON, Ohio 44311
        
Serial Number: 88495841
Internet Transmission Date: Thu Feb 27 10:24:50 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002271024503
37396-88495841-7107bf537021197884d42a8d4
b29fbc4c791ea1ff7dd0d5b4dcc667d91f2c-N/A
-N/A-20200227100742876546