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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88529841 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88529841/mark.png |
| LITERAL ELEMENT |
'73 ORIGINALS |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| The October 17, 2019 Office Action raises two issues. First, registration is refused for allegedly creating a likelihood of confusion relative to
U.S. Supplemental Trademark Registration No. 4,336,394 for the mark "73" in connection with clothing including shirts, sweaters, jackets and pants. Second, a disclaimer of "originals" is required as
being allegedly descriptive of the backpacks and duffle bags recited as the goods for this application. Reconsideration and withdrawal of the refusal of registration and the disclaimer requirement
are requested in view of the following reasons. The cited registration is expired for failing to timely file a declaration of use under Section 8. Since that registration has a May 14, 2013
registration date, the due date for filing the declaration of use, including the grace period, was due by November 14, 2019. Since the USPTO records fail to show that a declaration of use under
Section 8 was filed by that date, the cited registration is expired and cannot form the basis of a refusal of registration under section 2(d). Additionally, the refusal of registration raised in the
Office Action is improper. The marks are distinguishable by the apostrophe before "73" that gives the impression of a year date, particularly 1973, as well as the word "originals" even if considered
descriptive. Additionally, the scope of protection of the mark of the cited registration should be limited to the designation 73 alone and not in combination with other designations as shown, for
example, by another registration in class 018 including the designation 73, by an approved application and a number of registrations including 73 in class 025 for clothing in the documents submitted
herewith and by the cited registration being on the Supplemental Register such that it is limited to the substantially identical notation and goods. TMEP 1207.01(b)(ix). This application is also
distinguishable by the different goods and different classes. The mere use of others of the same mark for goods in class 018 and for clothing of the type in class 025 does not indicate that
purchasers would be confused as to the source of the goods of the cited registration and of the goods of this application by the mere presence of the designation 73 or both. Relative to the
disclaimer requirement, the designation in issue is best is only suggestive of the goods particularly since the office action has not specified any particular meaning of the word "originals" that
applies to the goods of this application. The mere use of originals by others does not necessarily demonstrate the descriptiveness of this term since that usage may merely be part of their
trademarks. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_21659124162-20191213102211475571_._TM19-0243_evidence_for_Response_to_10.17.19_OA.pdf |
CONVERTED PDF FILE(S)
(12 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0005.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0006.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0007.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0008.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0009.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0010.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0011.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0012.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\298\88529841\xml4\ROA0013.JPG |
| DESCRIPTION OF EVIDENCE FILE |
Copies of other applications and/or registrations |
| ATTORNEY SECTION (current) |
| NAME |
Mark S. Bicks |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
WENDEROTH, LIND & PONACK, L.L.P. |
| STREET |
1025 CONNECTICUT AVENUE, NW, SUITE 500 |
| CITY |
WASHINGTON |
| STATE |
District of Columbia |
| POSTAL CODE |
20036 |
| COUNTRY |
US |
| PHONE |
202-721-8212 |
| FAX |
(202)721-8250 |
| EMAIL |
wlp@wenderoth.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
TM19-0243 |
| ATTORNEY SECTION (proposed) |
| NAME |
Mark S. Bicks |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
WENDEROTH, LIND & PONACK, L.L.P. |
| STREET |
1025 CONNECTICUT AVENUE, NW, SUITE 500 |
| CITY |
WASHINGTON |
| STATE |
District of Columbia |
| POSTAL CODE |
20036 |
| COUNTRY |
United States |
| PHONE |
202-721-8212 |
| FAX |
(202)721-8250 |
| EMAIL |
wlp@wenderoth.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
TM19-0243 |
| OTHER APPOINTED ATTORNEY |
Warren M. Cheek, Michael S. Huppert, Jeffrey R. Filipek, W. Douglas Hahm, David M. Ovedovitz, Kenneth W. Fields, Amy E. Schmid and
Rebeccah Gan |
| CORRESPONDENCE SECTION (current) |
| NAME |
MARK S. BICKS |
| FIRM NAME |
WENDEROTH, LIND & PONACK, L.L.P. |
| STREET |
1025 CONNECTICUT AVENUE, NW, SUITE 500 |
| CITY |
WASHINGTON |
| STATE |
District of Columbia |
| POSTAL CODE |
20036 |
| COUNTRY |
US |
| PHONE |
202-721-8212 |
| FAX |
(202)721-8250 |
| EMAIL |
wlp@wenderoth.com; mbicks@wenderoth.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
TM19-0243 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Mark S. Bicks |
| FIRM NAME |
WENDEROTH, LIND & PONACK, L.L.P. |
| STREET |
1025 CONNECTICUT AVENUE, NW, SUITE 500 |
| CITY |
WASHINGTON |
| STATE |
District of Columbia |
| POSTAL CODE |
20036 |
| COUNTRY |
United States |
| PHONE |
202-721-8212 |
| FAX |
(202)721-8250 |
| EMAIL |
wlp@wenderoth.com; mbicks@wenderoth.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
TM19-0243 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Mark S. Bicks/ |
| SIGNATORY'S NAME |
Mark S. Bicks |
| SIGNATORY'S POSITION |
Attorney of record, DC bar member |
| SIGNATORY'S PHONE NUMBER |
(202)721-8212 |
| DATE SIGNED |
12/13/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Dec 13 10:34:26 EST 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20191213103426672881-8852
9841-70058ddc4199a1d6584b
88017c2720aa283b2b28113d6
e145b7a9898786a95-N/A-N/A
-20191213102211475571 |
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.
88529841 '73 ORIGINALS(Standard Characters, see http://uspto.report/TM/88529841/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The October 17, 2019 Office Action raises two issues. First, registration is refused for allegedly creating a likelihood of confusion relative to U.S. Supplemental Trademark Registration No.
4,336,394 for the mark "73" in connection with clothing including shirts, sweaters, jackets and pants. Second, a disclaimer of "originals" is required as being allegedly descriptive of the backpacks
and duffle bags recited as the goods for this application. Reconsideration and withdrawal of the refusal of registration and the disclaimer requirement are requested in view of the following reasons.
The cited registration is expired for failing to timely file a declaration of use under Section 8. Since that registration has a May 14, 2013 registration date, the due date for filing the
declaration of use, including the grace period, was due by November 14, 2019. Since the USPTO records fail to show that a declaration of use under Section 8 was filed by that date, the cited
registration is expired and cannot form the basis of a refusal of registration under section 2(d). Additionally, the refusal of registration raised in the Office Action is improper. The marks are
distinguishable by the apostrophe before "73" that gives the impression of a year date, particularly 1973, as well as the word "originals" even if considered descriptive. Additionally, the scope of
protection of the mark of the cited registration should be limited to the designation 73 alone and not in combination with other designations as shown, for example, by another registration in class
018 including the designation 73, by an approved application and a number of registrations including 73 in class 025 for clothing in the documents submitted herewith and by the cited registration
being on the Supplemental Register such that it is limited to the substantially identical notation and goods. TMEP 1207.01(b)(ix). This application is also distinguishable by the different goods and
different classes. The mere use of others of the same mark for goods in class 018 and for clothing of the type in class 025 does not indicate that purchasers would be confused as to the source of the
goods of the cited registration and of the goods of this application by the mere presence of the designation 73 or both. Relative to the disclaimer requirement, the designation in issue is best is
only suggestive of the goods particularly since the office action has not specified any particular meaning of the word "originals" that applies to the goods of this application. The mere use of
originals by others does not necessarily demonstrate the descriptiveness of this term since that usage may merely be part of their trademarks.
EVIDENCE
Evidence in the nature of Copies of other applications and/or registrations has been attached.
Original PDF file:
evi_21659124162-20191213102211475571_._TM19-0243_evidence_for_Response_to_10.17.19_OA.pdf
Converted PDF file(s) ( 12 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
The applicant's current attorney information: Mark S. Bicks. Mark S. Bicks of WENDEROTH, LIND & PONACK, L.L.P., is located at
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
US
The docket/reference number is TM19-0243.
The phone number is 202-721-8212.
The fax number is (202)721-8250.
The email address is wlp@wenderoth.com
The applicants proposed attorney information: Mark S. Bicks. Other appointed attorneys are Warren M. Cheek, Michael S. Huppert, Jeffrey R. Filipek, W. Douglas Hahm, David M. Ovedovitz, Kenneth W.
Fields, Amy E. Schmid and Rebeccah Gan. Mark S. Bicks of WENDEROTH, LIND & PONACK, L.L.P., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s)
is located at
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
United States
The docket/reference number is TM19-0243.
The phone number is 202-721-8212.
The fax number is (202)721-8250.
The email address is wlp@wenderoth.com
Mark S. Bicks 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.
The applicant's current correspondence information: MARK S. BICKS. MARK S. BICKS of WENDEROTH, LIND & PONACK, L.L.P., is located at
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
US
The docket/reference number is TM19-0243.
The phone number is 202-721-8212.
The fax number is (202)721-8250.
The email address is wlp@wenderoth.com; mbicks@wenderoth.com
The applicants proposed correspondence information: Mark S. Bicks. Mark S. Bicks of WENDEROTH, LIND & PONACK, L.L.P., is located at
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
United States
The docket/reference number is TM19-0243.
The phone number is 202-721-8212.
The fax number is (202)721-8250.
The email address is wlp@wenderoth.com; mbicks@wenderoth.com
SIGNATURE(S)
Response Signature
Signature: /Mark S. Bicks/ Date: 12/13/2019
Signatory's Name: Mark S. Bicks
Signatory's Position: Attorney of record, DC bar member
Signatory's Phone Number: (202)721-8212
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 S. BICKS
WENDEROTH, LIND & PONACK, L.L.P.
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
Mailing Address: Mark S. Bicks
WENDEROTH, LIND & PONACK, L.L.P.
1025 CONNECTICUT AVENUE, NW, SUITE 500
WASHINGTON, District of Columbia 20036
Serial Number: 88529841
Internet Transmission Date: Fri Dec 13 10:34:26 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201912131034266
72881-88529841-70058ddc4199a1d6584b88017
c2720aa283b2b28113d6e145b7a9898786a95-N/
A-N/A-20191213102211475571
