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)

---

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. 88784645 EXTREME TOWING(Standard Characters, see http://uspto.report/TM/88784645/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Please see the actual argument text attached within the Evidence section.. Also evidence in the nature of website screenshots with the date and time and URL. Evidence shows the exact legal requirements information for TOWING and LOCK PICKS under the four corners of the Registration, Registrant has no authority to provide either service, so their trademark cannot be the basis of economic disadvantage to the Registrant, if it were it would be the Registramnts unlawful provision of said services, since it would be without a license to do so, Registrant is forbidden from supplying those services, as Registrant expressly deleted those services from their Registration. thus has no economic impact. Evidence showing that Tow Truck services and Lock Pick services are in a wholly different channel of trade than merely road side assistance. Registrant is forbidden to tow or lock pick any cars because they do not possess the legally required licenses, safety credentials, mandated insurance, or machinery or equipmen, OSHA compliance and certification etc. Because Registrant CAN NOT provide any of the services that Applicant provides, there is no economic loss to the prosepective business advantage of Registrant, which is the central issue of likelihood of confusion. Also evidence that XTREME has a different connotation than Extreme, as in youthful sporty and suggests a younger demographic.
Original PDF file:
evi_6621423662-2020081912 5908086300_._Supporting_E vidence.pdf
Converted PDF file(s) ( 20 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20
Original PDF file:
evi_6621423662-2020081912 5908086300_._2020-08-18_X TREME_TOWING.pdf
Converted PDF file(s) ( 11 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 039 for Car and Heavy Truck Towing; Roadside and Recovery; Commercial Truck Towing and Recovery; Heavy Duty and Off Road Recovery; Equipment Hauling; 24hr Emergency Towing; Exotic Car Towing and Transport; Accident Towing; Remove abandoned and improperly stored vehicles; Remove vehicles not in compliance with management lease requirements; Police Towing; Local Towing; Car Loading; Donation Car Towing; Flatbed Towing; Transport Towing; Wheel Lift Towing; Show Car Towing and Hauling; 24hr Towing; Motorcycle Towing; Fuel Delivery; Tire Changing; Battery Jump Start; Lock Out Service; Water Recovery; 4x4 Off Road Recovery; Winching and Up-Righting; Off-Road Recovery; Box Truck Towing; Delivery Truck Towing; Utility Trucks Towing; Work Truck Towing; School Bus Towing; Dump Truck Towing; Construction Equipment Towing; Straight Truck Towing; Fire Truck Towing; Straight Truck Towing; Airplane Towing; Semi-Truck Recovery; Tractor-Trailer Recovery; Water Recovery; Mud Recovery; Beach Recovery; Construction Equipment Recovery; Dump Truck Recovery; Fork Lift Recovery; Bus and Motor Coach Recovery; Semi-Truck Uprighting; Tractor Recovery; Semi-Truck Accident Cleanup; Semi-Trailer Storage; Medium Duty Truck Recovery; Semi-Truck and Cargo Cleanup; Diesel Fuel Delivery; Trailer Storage; Cargo Hauling; Towing of machinery, namely, Boats, Scissor Lifts, Man Lifts, Fork Lifts, Pallet Jacks, Skid Steers, Bobcat Tractors, Farm Equipment, Forklifts, Small Planes, Play Houses, Sheds, Swing Sets; Towing services, namely, vehicle towing; Emergency roadside assistance services, namely, towing, winch-out and key delivery services; The provision of services in the nature of vehicle towing, namely, vehicle breakdown towing assistance, roadside assistance, flat tire changing, emergency fuel supplying, battery jump starting, and emergency road side repair services; Vehicle breakdown towing services; Emergency roadside assistance services, namely, responding to calls for roadside assistance, flat tire changing, emergency fuel supplying, and battery jump starting
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 08/01/2002 and first used in commerce at least as early as 08/01/2002 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Car and heavy truck towing; Roadside and Recovery; roadside and recovery, namely, vehicle towing; Commercial Truck Towing and Recovery; commercial truck towing and recovery, namely, vehicle towing; Heavy Duty and Off Road Recovery; heavy duty and off road recovery, namely, vehicle towing; Equipment Hauling; equipment hauling, namely, transport of equipment; 24hr Emergency Towing; 24hr emergency vehicle towing; exotic car towing and transport; Accident Towing; accident vehicle towing; Remove abandoned and improperly stored vehicles; remove abandoned and improperly stored vehicles, namely, vehicle towing; Remove vehicles not in compliance with management lease requirements; remove vehicles not in compliance with management lease requirements, namely, vehicle towing; Police Towing; police towing, namely, vehicle towing; Local Towing; local towing, namely, vehicle towing; Car Loading; car loading, namely, vehicle towing; donation car towing; Flatbed Towing; flatbed towing, namely, vehicle towing; Transport Towing; transport towing, namely, vehicle towing; Wheel Lift Towing; wheel lift towing, namely, vehicle towing; show car towing and hauling; 24hr Towing; 24hr towing, namely, vehicle towing; motorcycle towing; fuel delivery; Tire Changing; water recovery, namely, boat towing services; Battery Jump Start; 4x4 off road recovery, namely, vehicle towing; Lock Out Service; emergency roadside assistance services in the nature of winching and up-righting, namely, winch-out; Water Recovery; off-road recovery, namely, vehicle towing; 4x4 Off Road Recovery; box truck towing; Winching and Up-Righting; delivery truck towing; Off-Road Recovery; utility trucks towing; work truck towing; school bus towing; dump truck towing; construction equipment towing; fire truck towing; straight truck towing; airplane towing; semi-truck recovery, namely, vehicle towing; tractor-trailer recovery, namely, vehicle towing; Straight Truck Towing; mud recovery, namely, vehicle towing; beach recovery, namely, vehicle towing; Semi-Truck Recovery; construction equipment recovery, namely, towing of construction equipment; Tractor-Trailer Recovery; dump truck recovery; Water Recovery; fork lift recovery, namely, towing; Mud Recovery; bus and motor coach recovery, namely, vehicle towing; Beach Recovery; semi-truck uprighting, namely, emergency roadside assistance services in the nature of winch-out services; Construction Equipment Recovery; tractor recovery, namely, towing; semi-truck accident cleanup, namely, transport of semi-trucks involved in accidents; Fork Lift Recovery; semi-trailer storage; Bus and Motor Coach Recovery; medium duty truck recovery, namely, vehicle towing; Semi-Truck Uprighting; semi-truck and cargo cleanup, namely, transport of semi-trucks and cargo involved in accidents; Tractor Recovery; diesel fuel delivery; Semi-Truck Accident Cleanup; trailer storage; cargo hauling, namely, transport of cargo; Medium Duty Truck Recovery; towing of machinery, namely, boats, scissor lifts, man lifts, fork lifts, pallet jacks, skid steers, bobcat tractors, farm equipment, forklifts, small planes, play houses, sheds, swing sets; Semi-Truck and Cargo Cleanup; towing services, namely, vehicle towing; emergency roadside assistance services, namely, towing, winch-out and key delivery services; vehicle towing, namely, vehicle breakdown towing assistance; Cargo Hauling; emergency road side repair services; vehicle breakdown towing services (Class 039)¶
¶
Emergency roadside assistance services, namely, opening of locks (Class 045); The provision of services in the nature of vehicle towing, namely, vehicle breakdown towing assistance, roadside assistance, flat tire changing, emergency fuel supplying, battery jump starting, and emergency road side repair services; Vehicle breakdown towing services; Emergency roadside assistance services, namely, responding to calls for roadside assistance, flat tire changing, emergency fuel supplying, and battery jump startingClass 039 for Car and heavy truck towing; roadside and recovery, namely, vehicle towing; commercial truck towing and recovery, namely, vehicle towing; heavy duty and off road recovery, namely, vehicle towing; equipment hauling, namely, transport of equipment; 24hr emergency vehicle towing; exotic car towing and transport; accident vehicle towing; remove abandoned and improperly stored vehicles, namely, vehicle towing; remove vehicles not in compliance with management lease requirements, namely, vehicle towing; police towing, namely, vehicle towing; local towing, namely, vehicle towing; car loading, namely, vehicle towing; donation car towing; flatbed towing, namely, vehicle towing; transport towing, namely, vehicle towing; wheel lift towing, namely, vehicle towing; show car towing and hauling; 24hr towing, namely, vehicle towing; motorcycle towing; fuel delivery; water recovery, namely, boat towing services; 4x4 off road recovery, namely, vehicle towing; emergency roadside assistance services in the nature of winching and up-righting, namely, winch-out; off-road recovery, namely, vehicle towing; box truck towing; delivery truck towing; utility trucks towing; work truck towing; school bus towing; dump truck towing; construction equipment towing; fire truck towing; straight truck towing; airplane towing; semi-truck recovery, namely, vehicle towing; tractor-trailer recovery, namely, vehicle towing; mud recovery, namely, vehicle towing; beach recovery, namely, vehicle towing; construction equipment recovery, namely, towing of construction equipment; dump truck recovery; fork lift recovery, namely, towing; bus and motor coach recovery, namely, vehicle towing; semi-truck uprighting, namely, emergency roadside assistance services in the nature of winch-out services; tractor recovery, namely, towing; semi-truck accident cleanup, namely, transport of semi-trucks involved in accidents; semi-trailer storage; medium duty truck recovery, namely, vehicle towing; semi-truck and cargo cleanup, namely, transport of semi-trucks and cargo involved in accidents; diesel fuel delivery; trailer storage; cargo hauling, namely, transport of cargo; towing of machinery, namely, boats, scissor lifts, man lifts, fork lifts, pallet jacks, skid steers, bobcat tractors, farm equipment, forklifts, small planes, play houses, sheds, swing sets; towing services, namely, vehicle towing; emergency roadside assistance services, namely, towing, winch-out and key delivery services; vehicle towing, namely, vehicle breakdown towing assistance; emergency road side repair services; vehicle breakdown towing services (Class 039) Emergency roadside assistance services, namely, opening of locks (Class 045)
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 08/01/2002 and first used in commerce at least as early as 08/01/2002 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use TOWING apart from the mark as shown.


Miscellaneous Statement
If category IC 039 remains at issue and is subject to a final rejection, then we elect 045 as the alternate category. But if category 039 is accepted toward a notice of allowance, in the alternative we selelect IC 039, in lieu of 045. Thus no additional fees are due. Only one category is elected, 039 only, unless it would lead to final rejection, then 045.

Correspondence Information (current):
      MICHAEL O'BRIEN
      PRIMARY EMAIL FOR CORRESPONDENCE: mobrien@obrienpatents.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jack@fritzlawgroup.com; extremetowing2007@yahoo.com

The docket/reference number is JOHNSON.TM01.
Correspondence Information (proposed):
      Michael O'Brien
      PRIMARY EMAIL FOR CORRESPONDENCE: mobrien@obrienpatents.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jack@fritzlawgroup.com; extremetowing2007@yahoo.com

The docket/reference number is JOHNSON.TM01.

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: /Michael O'Brien/     Date: 08/19/2020
Signatory's Name: Michael O'Brien
Signatory's Position: Attorney of Record. California Bar Member.

Signatory's Phone Number: 916-760-8265

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:    MICHAEL O'BRIEN
   THE LAW OFFICE OF MICHAEL O'BRIEN
   
   417 MACE BLVD. SUITE J-119
   DAVIS, California 95618
Mailing Address:    Michael O'Brien
   THE LAW OFFICE OF MICHAEL O'BRIEN
   417 MACE BLVD. SUITE J-119
   DAVIS, California 95618
        
Serial Number: 88784645
Internet Transmission Date: Wed Aug 19 13:45:26 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020081913452620
9963-88784645-740ae4d59e2bb7325fc61a9a79
212f049bcfb3dd77f93a157aab7daa30d9-N/A-N
/A-20200819125908086300