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. 88597582 CALIBER(Standard Characters, see http://uspto.report/TM/88597582/mark.png) has been amended as follows:

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

This is responsive to an Office Action sent on December 13, 2019. In the Office Action, the present application was partially rejected under 2(d). In particular, the trailer hitch locks of the present application was rejected as being confusingly similar to US Registration No. 3899086 for the CALIBER mark for Metal combination lock, metal padlock which is owned by CVS Pharmacy, Inc. Applicant respectfully disagrees with this allegation because at least the goods are sold in different channels of trade. Applicant submits that applicant's goods are sold through outdoor and powersports outlets. In contrast, upon information and belief registrant's goods are sold through its pharmacy-based retail outlets. As such, the channels of trade a different, which precludes any likelihood of confusion. However, to further prosecution, Applicant has deleted trailer hitch locks from the present application, which renders the partial 2(d) rejection as moot. Further, because applicant has amended the goods to delete the trailer hitch locks, the issue of the multi-class application has been rendered as moot. Finally, the Office Action provided guidance for the identification of goods. Applicant has amended the goods regarding the rollers for the boat trailers per the suggestion in the Office Action. However, Applicant respectfully submits that recited guides and grips for use on trailer and truck beds are more substantive than protective plastic trim. Rather, the goods are attached to the bed surface to aid in moving motorized vehicles such as snowmobiles and atvs onto and off of the bed. The guides and grips are configured to engage the skis of snowmobiles and tires of the atvs to provide traction, to aid in steering the vehicles and also to aid in loading and unloading the vehicles. The trailer mounted shields are rigid plastic members that are attached to front of the trailer. The shields prevent road debris from hitting the vehicles, which prevents damage to the vehicle in transit. The shields are not flaps. However, Applicant has amended the goods to incorporate the suggested language while reciting the rigid shields instead of the plastic flaps. The amended goods are provided below where deleted language has been stricken through and added language has been underlined. Guides and grips for use on trailers and truck beds; trailer mounted shields, namely, rigid shields for mounting to a front end of trailer and ramps for loading and unloading vehicles.; dollies for vehicles; vehicle and trailer accessories, namely, trailer hitch locks, glides, grips and slides, hitch handles, lifts mounted to trailers; boat trailer accessories, namely, bunk wraps, bunk slide slides and rollers for attachment to boat trailers to reduce friction when loading and unloading boats. With the amendment to the goods, Applicant believes the current application is in allowable form. As such, Applicant respectfully requests that the present application be allowed to publish.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Guides and grips for use on trailers and truck beds; trailer mounted shields; dollies for vehicles; vehicle and trailer accessories, namely, trailer hitch locks, glides, grips and slides, hitch handles, lifts mounted to trailers; boat trailer accessories, namely, bunk wraps, bunk slide and rollers
Original Filing Basis:
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 06/03/1996 and first used in commerce at least as early as 06/03/1996 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Guides and grips for use on trailers and truck beds; trailer mounted shields; trailer mounted shields, namely, rigid shields for mounting to a front end of trailer and ramps for loading and unloading vehicles; dollies for vehicles; vehicle and trailer accessories, namely, trailer hitch locks, glides, grips and slides, hitch handles, lifts mounted to trailers; vehicle and trailer accessories, namely, glides, grips and slides, hitch handles, lifts mounted to trailers; boat trailer accessories, namely, bunk wraps, bunk slide and rollers; boat trailer accessories, namely, bunk wraps, bunk slides and rollers for attachment to boat trailers to reduce friction when loading and unloading boats.Class 012 for Guides and grips for use on trailers and truck beds; trailer mounted shields, namely, rigid shields for mounting to a front end of trailer and ramps for loading and unloading vehicles; dollies for vehicles; vehicle and trailer accessories, namely, glides, grips and slides, hitch handles, lifts mounted to trailers; boat trailer accessories, namely, bunk wraps, bunk slides and rollers for attachment to boat trailers to reduce friction when loading and unloading boats.
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 06/03/1996 and first used in commerce at least as early as 06/03/1996 , and is now in use in such commerce.
The applicant's current attorney information: Peter J. Ims. Peter J. Ims of WESTMAN, CHAMPLIN & KOEHLER, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      900 2ND AVE S, SUITE 1400
      MINNEAPOLIS, Minnesota 55402
      US

The email address is pims@wck.com

The applicants proposed attorney information: Peter J. Ims. Other appointed attorneys are Steven M. Koehler, David D. Brush, John D. Veldhuis-Kroeze, Theodore M. Magee, Brian D. Kaul, Alan G. Rego, Leanne Taveggia Farrell, Z. Peter Sawicki, Peter J. Ims, James L. Young, Hallie A. Finucane, Mai-Tram D. Lauer, Daniel J. Polglaze, Amanda M. Prose. Peter J. Ims of Westman, Champlin & Koehler, P.A., 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 1100
      121 South Eighth Street
      Minneapolis, Minnesota 55402
      United States
The docket/reference number is C106.6000US1.

The email address is pims@wck.com

Peter J. Ims 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: PETER J. IMS. PETER J. IMS of WESTMAN, CHAMPLIN & KOEHLER, P.A., is located at

      900 2ND AVE S, SUITE 1400
      MINNEAPOLIS, Minnesota 55402
      US

The phone number is 612-334-3222.

The email address is pims@wck.com; blindstrom@wck.com

The applicants proposed correspondence information: Peter J. Ims. Peter J. Ims of Westman, Champlin & Koehler, P.A., is located at

      Suite 1100
      121 South Eighth Street
      Minneapolis, Minnesota 55402
      United States
The docket/reference number is C106.6000US1.

The phone number is 612-334-3222.

The email address is pims@wck.com; blindstrom@wck.com

SIGNATURE(S)
Response Signature
Signature: /Peter J. Ims/     Date: 12/18/2019
Signatory's Name: Peter J. Ims
Signatory's Position: Attorney of Record MN Bar Member

Signatory's Phone Number: 6123343222

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:    PETER J. IMS
   WESTMAN, CHAMPLIN & KOEHLER, P.A.
   
   900 2ND AVE S, SUITE 1400
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Peter J. Ims
   Westman, Champlin & Koehler, P.A.
   Suite 1100
   121 South Eighth Street
   Minneapolis, Minnesota 55402
        
Serial Number: 88597582
Internet Transmission Date: Wed Dec 18 11:32:17 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912181132171
50162-88597582-7002867db47e315966cb8944d
262bb8fcdf5f6c23ff87c9aa235f9c7f209033da
-N/A-N/A-20191218105052804617