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. 88730040 RAPTOR (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8873004 0/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: RAPTOR (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8873004 0/large)
Proposed: RAPTOR (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of The mark consists of a skeleton of a dinosaur (e.g., a raptor) laying over the word RAPTOR.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Mark Nalley, a citizen of United States, having an address of
      23811 Washington Avenue, Unit C-196
      Murrieta, California 92562
      United States
      Email Address: XXXX
      949-476-0600
      949-476-0606
Proposed: Mark Nalley, a citizen of United States, having an address of
      23811 Washington Avenue, Unit C-196
      Murrieta, California 92562
      United States
      Email Address: XXXX
      949-476-0600
      949-476-0606

ADDITIONAL STATEMENTS
Miscellaneous Statement
In reply to the Office Action dated March 23, 2020, please amend the above-identified trademark application by revising the original description of the applied for mark to read as follows: The mark consists of a raptor laying over the word "RAPTOR." It is noted from the Office Action that registration of the applied for mark has been refused, because it is suggested that the mark shown on the drawing does not match the mark shown on the specimen. However, the decision to refuse registration on this basis is not understood, since the mark shown on the drawing and on the specimen filed in this application appear to the undersigned attorney to be identical. Nevertheless, it may be that the drawing was distorted during its electronic transmission to the Patent and Trademark Office. Therefore, the applicant is resubmitting the original drawing as it was previously submitted and requesting that the Examining Attorney reconsider his aforementioned decision to refuse registration. The Office Action has called the applicant's attention to earlier filed Application Serial No. 87/573,348 for the mark RAPTOR PROFESSIONAL TATOO EQUIPMENT. It is pointed out that this application has now matured into Registration No. 5,403,870. Although this registration has not been used as a basis to refuse registration of the applied for mark pursuant to Section 2(d), it is pointed out that the registered mark clearly implies an association of the goods described in the registration with tattoo equipment. On the other hand, the applied for mark implies no such association and, in reality, no such association exists. This fact will not be overlooked by purchasers so as to enable them to identify the applicant as the source of its goods and distinguish the applicant's goods from those of the registrant. More importantly, as was indicated when the subject application was filed, the applicant (i.e., Raptor, Inc.) is the owner of Registration No. 5,544,946 for the design of a raptor which is identical to the raptor design that is featured in the applied for mark for use on identical goods. To this end, the applicant's registered raptor design has been used on or in connection with the applicant's goods since 2004. Likewise, in the present case, the applied for mark has also been used on or in connection with the applicant's identical goods since 2004. The point to be made is that by virtue of the applicant's long use of its registered raptor design for 16 years, purchasers will associate this distinctive design, when applied to the applicant's goods, with the applicant and no other source. Thus, despite the goods of the applicant and the owner of Registration No. 5,403,870 being similar, it is submitted that purchasers are likely to have become so familiar with the applicant's registered raptor design that such purchasers will understand that goods bearing the term RAPTOR in combination with the applicant's registered raptor design originate from the applicant. In view of the foregoing, it is believed that the applied for mark RAPTOR (plus raptor design) can be distinguished in the minds of purchasers from the registered mark RAPTOR PROFESSIONAL TATOO EQUIPMENT. Accordingly, it is submitted that the applied for mark is in condition for registration, and a Notice of Publication is earnestly solicited in this regard.

Correspondence Information (current):
      MORLAND C. FISCHER
      PRIMARY EMAIL FOR CORRESPONDENCE: morlandf@earthlink.net
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is NALL-313.
Correspondence Information (proposed):
      Morland C. Fischer
      PRIMARY EMAIL FOR CORRESPONDENCE: morlandf@earthlink.net
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is NALL-313.

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: /Morland C. Fischer/     Date: 09/11/2020
Signatory's Name: Morland C. Fischer
Signatory's Position: Attorney of record

Signatory's Phone Number: 949-476-0600

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:    MORLAND C. FISCHER
   LAW OFFICES OF MORLAND C. FISCHER
   
   2030 MAIN STREET, SUITE 1300
   IRVINE, California 92614
Mailing Address:    Morland C. Fischer
   LAW OFFICES OF MORLAND C. FISCHER
   2030 MAIN STREET, SUITE 1300
   IRVINE, California 92614
        
Serial Number: 88730040
Internet Transmission Date: Fri Sep 11 18:43:05 ET 2020
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20200911184305657
790-88730040-7509b61d453d1e0632c91da8d61
03bae793be5362c8b8c9c9caf03ed3870ce7e-N/
A-N/A-20200911182917784352