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. 88591072 WASH U (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8859107 2/large) has been amended as follows:

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

Applicant respectfully requests reconsideration of the objection to the specimen. The Office action explains that applicant's alternative option to respond to the objection is to submit a "verified substitute specimen." Applicant elects this option. The accompanying specimens show the mark on the goods.

Applicant respectfully requests reconsideration of the assertion that applicant's section 2(f) claim is unacceptable. Applicant has amended its dates of first use to "at least as early as 2012," which is consistent with the correct date stated in applicant's Declaration of Acquired Distinctiveness. Applicant's trademark on the front of the shirts, hats, etc. is recognized as a trademark and is not perceived merely as a decorative or ornamental feature on the goods because i) the mark has been in use sufficiently long that it has acquired distinctiveness as supported by applicant's previously submitted statement of acquired distinctiveness, ii) the mark clearly refers to a university mascot, and universities are known to be the licensing source – i.e., secondary source -- behind clothing bearing their mascots, and iii) the registrant owns Reg. Nos. 3672406 and 3674205 for similar marks for clothing. With respect to point 1, the mark has not just been in use for five years, but for more than seven years. This long use of the mark, in the overall context which includes conditions (ii) and (iii), is respectfully submitted to be sufficient for applicant's mark to have acquired distinctiveness.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 025 for Hats; Polo shirts; Shirts; Shorts; Sweatshirts; T-shirts; Windshirts
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2015 and first used in commerce at least as early as 00/00/2015 , and is now in use in such commerce.


Proposed:
Class 025 for Hats; Polo shirts; Shirts; Shorts; Sweatshirts; T-shirts; Windshirts
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2012 and first used in commerce at least as early as 00/00/2012 , and is now in use in such commerce.
In International Class 025, the mark was first used at least as early as 00/00/2012 and first used in commerce at least as early as 00/00/2012.

Applicant hereby submits one(or more) specimen(s) for Class 025. The specimen(s) submitted consists of clothing photographs.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-68142158248-20200811 142320695139_._WASHU1.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPU0-68142158248-20200811 142320695139_._WASHU2.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: The Washington University, a corporation of Missouri, having an address of
      One Brookings Drive
      St. Louis, Missouri 63130
      United States

Proposed: The Washington University, a corporation of Missouri, having an address of
      One Brookings Drive
      St. Louis, Missouri 63130
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
URLs http://www.bkstr.com/washingtonstore/product/washington-st--louis-toddler-b-105167-1 AND http://www.bkstr.com/washingtonstore/product/washington-university-bears-toddler-t-shirt-220136-1?cm_sp=Certona_PDPNonTextRight-_-Desktop-_-582 printed to PDF on August 11, 2020

Correspondence Information (current):
      PAUL I. J. FLEISCHUT
      PRIMARY EMAIL FOR CORRESPONDENCE: stl.ustrademarks@stinson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is WSHU 2271.
Correspondence Information (proposed):
      Paul I. J. Fleischut
      PRIMARY EMAIL FOR CORRESPONDENCE: stl.ustrademarks@stinson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is WSHU 2271.

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)
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: /paul fleischut/      Date: 08/11/2020
Signatory's Name: Paul I. J. Fleischut
Signatory's Position: Attorney of record, Missouri bar member
Signatory's Phone Number: 314-345-7003


Response Signature
Signature: /paul fleischut/     Date: 08/11/2020
Signatory's Name: Paul I. J. Fleischut
Signatory's Position: Attorney of record, Missouri bar member

Signatory's Phone Number: 314-345-7003

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:    PAUL I. J. FLEISCHUT
   STINSON LLP
   
   7700 FORSYTH BLVD, SUITE 1100
   ST. LOUIS, Missouri 63105
Mailing Address:    Paul I. J. Fleischut
   STINSON LLP
   7700 FORSYTH BLVD, SUITE 1100
   ST. LOUIS, Missouri 63105
        
Serial Number: 88591072
Internet Transmission Date: Tue Aug 11 14:26:58 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202008111426585
50618-88591072-740ec6c19c12186eef6370dbb
b3ab14a5afeca0344be0ad14cf749da6b0e1fd61
-N/A-N/A-20200811142320695139