Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88797836 EVERLAST(Standard Characters, see http://uspto.report/TM/88797836/mark.png) has been amended as follows:

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

Please see Applicant's actual argument in the Evidence section

EVIDENCE
Evidence has been attached: Applicant's actual argument and the Exhibit referenced therein
Original PDF file:
evi_69124173185-202108291 61118951631_._ROA_EVERLAS T_SN_88797836_IC_19.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_69124173185-202108291 61118951631_._Exhibit_A.pdf
Converted PDF file(s) ( 12 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 019 for Athletic flooring; flooring comprised of artificial turf, foam, hardwood, soft PVC vinyl, vinyl and wood, adapted for physical fitness activities; non-metal flooring; hardwood flooring; parquet flooring; rubber flooring; rubber gym flooring rolls; wood flooring; wood tile flooring; synthetic flooring materials or wall-claddings; tile flooring, not of metal; rubber floor tiles; rubber gym floor tiles
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 018107990 filed 08/14/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 019 for Athletic flooring; flooring comprised of artificial turf, foam, hardwood, soft PVC vinyl, vinyl and wood, adapted for physical fitness activities; non-metal flooring; hardwood flooring; parquet flooring; rubber flooring; rubber gym flooring rolls; wood flooring; wood tile flooring; synthetic flooring materials or wall-claddings; tile flooring, not of metal; rubber floor tiles; rubber gym floor tiles
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 018107990 filed 08/14/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

The owner's/holder's current attorney information: Howard N. Aronson. Howard N. Aronson of LACKENBACH SIEGEL LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1 CHASE ROAD
      SCARSDALE, New York 10583
      United States
The docket/reference number is 22062.
      The phone number is 866-201-2030.
      The fax number is 832-201-8247.
      The email address is TMDocket@NLS.Law

The owner's/holder's proposed attorney information: Howard N. Aronson. Other appointed attorneys are N. Alexander Nolte, Renee L. Duff, Grazia A. Luppino, Cathy Shore-Sirotin, Eileen C. DeVries, Lindsey S. Leibowitz. Howard N. Aronson of Nolte Lackenbach Siegel, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      One Chase Road
      Scarsdale, New York 10583
      United States
The docket/reference number is 22062.
      The phone number is 866-201-2030.
      The fax number is 832-201-8247.
      The email address is TMDocket@NLS.Law

Howard N. Aronson 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.Correspondence Information (current):
      Howard N. Aronson
      PRIMARY EMAIL FOR CORRESPONDENCE: TMDocket@NLS.Law
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): edevries@NLS.Law; mgreenspan@nls.law

The docket/reference number is 22062.
Correspondence Information (proposed):
      Howard N. Aronson
      PRIMARY EMAIL FOR CORRESPONDENCE: TMDocket@NLS.Law
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rduff@nls.law; gluppino@nls.law

The docket/reference number is 22062.

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: /Grazia A. Luppino/     Date: 08/29/2021
Signatory's Name: Grazia A. Luppino
Signatory's Position: Attorney of Record, CT Bar Member

Signatory's Phone Number: 203-505-5750 Signature method: Signed directly within the form

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:    Howard N. Aronson
   LACKENBACH SIEGEL LLP
   
   1 CHASE ROAD
   SCARSDALE, New York 10583
Mailing Address:    Howard N. Aronson
   Nolte Lackenbach Siegel
   One Chase Road
   Scarsdale, New York 10583
        
Serial Number: 88797836
Internet Transmission Date: Sun Aug 29 16:35:53 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202108291635537
36832-88797836-781b040beff484cc87160ba52
4ce3c1b97c9e149e8d434cf1e47422eff4c2ce4-
N/A-N/A-20210829161118951631