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. 88692882 ENDURA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8869288 2/large) has been amended as follows:

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

The Examining Attorney has cited a prior registration, against Class 9 only, for ENDURA for ?eyeglass lenses? and ?optical coating for eyeglass lenses.? The amendment submitted herewith deletes "Eyewear; sunglasses; cyclists' glasses; bags, lenses and frames for eyewear and sunglasses." This amendment obviates the alleged likelihood of confusion. Applicant also draws the Examining Attorney's attention to Applicant' registration No. 475539, copy attached, for the word mark ENDURA in which the following goods are registered in Class 9 in a registration that is also junior to the cited registration: "portable visibility lighting devices for safety purposes; reflective safety products, namely, personal reflectors for cyclists for road safety, reflective armbands for cyclists for protection against accident or injury and reflective armbands for cyclists containing LED lights; protective headgear, namely, crash helmets for cyclists for use by cyclists for protection against accident and injury; tyre pressure gauges." As such a large number of the same remaining class 9 goods already co-exist on the register with the cited Registration. Applicant requests that the citation in Class 9 be removed and the application be approved for publication.

EVIDENCE
Evidence has been attached: Copy of Applicant's earlier registration
Original PDF file:
evi_100151744-20200625181 044169143_._ENDURA_REG.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Eyewear; sunglasses; cyclists' glasses; bags, lenses and frames for eyewear and sunglasses; portable visibility lighting for safety purposes; reflective safety products, namely, reflective safety items to be worn on the body, reflective armbands for protection against accident or injury; reflective clothing for the prevention of accidents; crash helmets for cyclists; protective helmets; sports helmets; protective headgear for use by cyclists for protection against accident and injury; tyre pressure gauges; armbands for cyclists containing LED lights; flashing safety lights; protective and safety equipment; articles of clothing for wear by cyclists for protection against accident or injury; safety clothing for the prevention of accident or injury; parts and fittings for all the aforesaid
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Eyewear; Portable visibility lighting for safety purposes; sunglasses; reflective safety products, namely, reflective safety items to be worn on the body, namely, reflective safety vests and reflective armbands for protection against accident or injury; cyclists' glasses; reflective clothing for the prevention of accidents; bags, lenses and frames for eyewear and sunglasses; crash helmets for cyclists; protective helmets; reflective safety products, namely, reflective safety items to be worn on the body, reflective armbands for protection against accident or injury; sports helmets; protective headgear for use by cyclists for protection against accident and injury; tyre pressure gauges; safety armbands for cyclists containing LED lights for greater visibility; flashing safety lights; protective and safety equipment; articles of clothing for wear by cyclists for protection against accident or injury; armbands for cyclists containing LED lights; safety clothing for the prevention of accident or injury; parts and fittings for all the aforesaidClass 009 for Portable visibility lighting for safety purposes; reflective safety products, namely, reflective safety items to be worn on the body, namely, reflective safety vests and reflective armbands for protection against accident or injury; reflective clothing for the prevention of accidents; crash helmets for cyclists; protective helmets; sports helmets; protective headgear for use by cyclists for protection against accident and injury; tyre pressure gauges; safety armbands for cyclists containing LED lights for greater visibility; flashing safety lights; protective and safety equipment; articles of clothing for wear by cyclists for protection against accident or injury; safety clothing for the prevention of accident or injury; parts and fittings for all the aforesaid
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:

Current:
Class 018 for Luggage; tool bags sold empty; courier bags; rucksacks; sports bags; travelling bags; duffel bags; garment bags for travel; backpacks; wallets; trunks for travelling; suitcases; shoe bags; umbrellas and parasols
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Luggage; tool bags sold empty; courier bags; rucksacks; sports bags; travelling bags; duffel bags; garment bags for travel; backpacks; wallets; trunks for travelling; suitcases; shoe bags; shoe bags for travel; umbrellas and parasolsClass 018 for Luggage; tool bags sold empty; courier bags; rucksacks; sports bags; travelling bags; duffel bags; garment bags for travel; backpacks; wallets; trunks for travelling; suitcases; shoe bags for travel; umbrellas and parasols
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:

Current:
Class 025 for Articles of clothing, footwear and headwear for cyclists; arm, leg and body warmers for cyclists; cycling tops; cycling shorts; cycling longs; padded undershorts for cyclists; gloves for cycling; jackets for cycling; hooded jackets; gilets; jerseys for cycling; tops; shirts; T-shirts; base layers; trousers for cycling; over trousers; shorts for cycling; suits for cycling; knickers; pants for cycling; underwear for cycling; fingerless gloves; neckwear; neck warmers; scarves; head bands; hoods; hats for cycling; caps; beanies; balaclavas; shoes for cycling; overshoes for cycling; clothing; headgear; footwear; socks; overshoes; waterproof clothing; windproof clothing; weatherproof clothing; weatherproof headgear; weatherproof footwear; thermal clothing
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Articles of clothing, footwear and headwear for cyclists; Articles of clothing, footwear and headwear for cyclists, namely, arm, leg and body warmers for cyclists; arm, leg and body warmers for cyclists; cycling tops; cycling shorts; cycling longs; padded undershorts for cyclists; gloves for cycling; jackets for cycling; hooded jackets; gilets; jerseys for cycling; tops; shirts; T-shirts; base layers; trousers for cycling; over trousers; shorts for cycling; suits for cycling; knickers; pants for cycling; underwear for cycling; fingerless gloves; neckwear; neck warmers; scarves; head bands; hoods; hats for cycling; caps; beanies; balaclavas; shoes for cycling; overshoes for cycling; headwear, namely, hats and caps; clothing; footwear; headgear; socks; overshoes; waterproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; windproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; waterproof clothing; weatherproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; windproof clothing; weatherproof headwear, namely, hats and caps; weatherproof clothing; weatherproof footwear; weatherproof headgear; thermal clothing, namely, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear and socks; thermal clothingClass 025 for Articles of clothing, footwear and headwear for cyclists, namely, arm, leg and body warmers for cyclists; cycling tops; cycling shorts; cycling longs; padded undershorts for cyclists; gloves for cycling; jackets for cycling; hooded jackets; gilets; jerseys for cycling; tops; shirts; T-shirts; base layers; trousers for cycling; over trousers; shorts for cycling; suits for cycling; knickers; pants for cycling; underwear for cycling; fingerless gloves; neckwear; neck warmers; scarves; head bands; hoods; hats for cycling; caps; beanies; balaclavas; shoes for cycling; overshoes for cycling; headwear, namely, hats and caps; footwear; socks; overshoes; waterproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; windproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; weatherproof clothing, namely, jackets, trousers, over trousers, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear, socks and overshoes; weatherproof headwear, namely, hats and caps; weatherproof footwear; thermal clothing, namely, base layers, T-shirts, long-sleeved T-shirts, shirts, jerseys, underwear and socks
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018142083 filed 10/23/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Endura Ltd. a(n) limited company (ltd.), legally organized under the laws of United Kingdom, having an address of

            3 Starlaw Business Park      Livingston
      West Lothian, EH548SF
      United Kingdom

Proposed: Endura Ltd., limited company (ltd.) legally organized under the laws of United Kingdom, having an address of
      3 Starlaw Business Park
      Livingston
      West Lothian, EH548SF
      United Kingdom
      Email Address: XXXX
Correspondence Information (current):
      JANET SATTERTHWAITE
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@potomaclaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jsatterthwaite@potomaclaw.com

The docket/reference number is 2232-14.
Correspondence Information (proposed):
      Janet Satterthwaite
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@potomaclaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jsatterthwaite@potomaclaw.com

The docket/reference number is 2232-14.

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)
Response Signature
Signature: /Janet Satterthwaite/     Date: 06/25/2020
Signatory's Name: Janet Satterthwaite
Signatory's Position: Attorney of Record DC/Va bar

Signatory's Phone Number: 2024861578

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:    JANET SATTERTHWAITE
   POTOMAC LAW GROUP
   SUITE 700
   1300 PENNSYLVANIA AVE NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Janet Satterthwaite
   POTOMAC LAW GROUP
   SUITE 700
   1300 PENNSYLVANIA AVE NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88692882
Internet Transmission Date: Thu Jun 25 18:31:17 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20200625183117620
630-88692882-71090f3d7feca50509fbadccf9a
b1552ad8fc84f89c0d013733241a7cffb8c-N/A-
N/A-20200625181044169143