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. 88842211 MAKO(Standard Characters, see http://uspto.report/TM/88842211/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: The examining attorney refused registration of the applied for registration based on an an alleged likelihood of confusion with the mark The MAKO GROUP (and design), U.S. Registration No. 3,939,373. This refusal is traversed for the reasons that follow. First, the applicant has entered into a Consent Agreement (attached) with the owner of the The MAKO GROUP registration. The agreement includes statements as to why a likelihood of confusion is unlikely, i.e., the goods are distinct (firearms vs. firearms accessories), the channels of trade are different, and the marks themselves are different (MAKO vs. THE MAKO GROUP (and design). Moreover, the agreement includes arrangements undertaken by the parties to avoid confusion (i.e., the parties shall cooperate in taking any reasonable action to avoid and prevent confusion and correct any instances of likelihood of confusion). Furthermore, the marks themselves are not the same. MAKO is different than THE MAKO GROUP with a specific design that includes a Mako shark. The similarity and nature of the covered goods are different. Firearms are different than firearms accessories. The Mako Group is an online retailer that offers the tactical equipment and weapon accessories from Israel. Kimber is a manufacturer and seller of firearms through various firearms dealers in the U.S. The established trade channels are different. The Mako Group is an online retailer. Firearms manufactured sold by Kimber are sold in person through distributors and local sellers. Firearms sold in the U.S. must meet various very specific federal and state requirements, including background checks. It is therefore respectfully requested that the examining attorney withdraw the refusal and pass the application to publication.
Original PDF file:
evi_73165169107-202009161 31629672545_._Mako_Group_ -_Kimber_Agreement.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Correspondence Information (current):
      GARY A. GREENE
      PRIMARY EMAIL FOR CORRESPONDENCE: ggreene@kbsiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademarks@kbsiplaw.com

The docket/reference number is 6001-011.
Correspondence Information (proposed):
      Gary A. Greene
      PRIMARY EMAIL FOR CORRESPONDENCE: ggreene@kbsiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademarks@kbsiplaw.com

The docket/reference number is 6001-011.

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: /Gary A. Greene/     Date: 09/16/2020
Signatory's Name: Gary A. Greene
Signatory's Position: Attorney

Signatory's Phone Number: 732-5780103

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:    GARY A. GREENE
   KAPAN BREYER SCHWARZ, LLP
   
   90 MATAWAN ROAD - SUITE 201
   MATAWAN, New Jersey 07747
Mailing Address:    Gary A. Greene
   KAPAN BREYER SCHWARZ, LLP
   90 MATAWAN ROAD - SUITE 201
   MATAWAN, New Jersey 07747
        
Serial Number: 88842211
Internet Transmission Date: Wed Sep 16 13:28:05 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202009161328056
27903-88842211-7506b5dc45c363b6ed5ab4eff
4420bba4c7a0b4b496e6fd3e63564a62153042f8
-N/A-N/A-20200916131629672545