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. 88673832 PREMIUM DOMAIN NAME(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88673832/large) has been amended as follows:

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

The examining attorney is refusing registration of this mark in classes 35, 42, and 45 due to descriptiveness. Applicant, however, has deleted class 35 and is requesting registration of classes 42 and 45 on the Supplemental Register.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Brand development and evaluation services in the field of trademarks, trade names and domain names; Business information services and appraisals; Commercial administration of the licensing of the goods and services of others; Franchise services, namely, offering business management assistance in the establishment and operation of Retail Stores; Franchising, namely, consultation and assistance in business management, organization and promotion

Applicant proposes to amend the following:
Current: Class 016 for Business cards; Printed certificates; Printed certificates for use as awards
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.

Proposed: Class 016 for Business cards; Printed certificates; Printed certificates for use as awards
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 016. The specimen(s) submitted consists of web pages describing the goods and showing the means to order the goods (URL address is premiumdomainname.com and the access date is 5/27/20).
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

Applicant proposes to amend the following:
Current: Class 025 for Baseball caps and hats; Hooded sweat shirts; Long-sleeved shirts; Sweat shirts; T-shirts
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.

Proposed: Class 025 for Baseball caps and hats; Hooded sweat shirts; Long-sleeved shirts; Sweat shirts; T-shirts
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 025. The specimen(s) submitted consists of web pages describing the goods and showing the means to order the goods (URL address is premiumdomainname.com and access date is 5/27/2020).
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

Applicant proposes to amend the following:
Current: Class 028 for Divot repair tools being golf accessories; Golf balls; Golf tees
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.

Proposed: Class 028 for Divot repair tools being golf accessories; Golf balls; Golf tees
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 028. The specimen(s) submitted consists of web pages describing the goods and showing the means to order the goods (URL address is premiumdomainname.com and access date is 5/27/2020).
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

Applicant proposes to amend the following:
Current: Class 042 for Authentication, issuance and validation of digital certificates; Computer services, namely, domain forwarding services; Domain name search services, namely, conducting online computerized searches for the availability of domain names; Parking domain names for others, namely, providing computer servers for electronic storage of domain name addresses; Research services in the field of information and telecommunications technology
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Authentication, issuance and validation of digital certificates; Computer services, namely, domain forwarding services; Domain name search services, namely, conducting online computerized searches for the availability of domain names; Research services in the field of information and telecommunications technology; Parking domain names for others, namely, providing computer servers for electronic storage of domain name addressesClass 042 for Authentication, issuance and validation of digital certificates; Computer services, namely, domain forwarding services; Research services in the field of information and telecommunications technology
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of web page advertising the services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant proposes to amend the following:
Current: Class 045 for Copyright management; Domain name registration services, namely, conducting domain name searches for the purpose of providing legal advice on domain name registration; Leasing of internet domain names; Licensing of intellectual property rights; Licensing of intellectual property in the field of trademarks, copyrights and domain names; Trademark agent services
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Copyright management; Leasing of internet domain names; Domain name registration services, namely, conducting domain name searches for the purpose of providing legal advice on domain name registration; Licensing of intellectual property rights; Licensing of intellectual property in the field of trademarks, copyrights and domain names; Trademark agent servicesClass 045 for Leasing of internet domain names; Licensing of intellectual property rights; Licensing of intellectual property in the field of trademarks, copyrights and domain names
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 10/09/2019 and first used in commerce at least as early as 10/09/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 045. The specimen(s) submitted consists of web page advertising the services (URL address is premiumdomainname.com and access date is 5/27/2020).
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: John Tore, a citizen of United States, having an address of
      15214 T C Jester Blvd
      Houston, Texas 77068
      United States

Proposed: Tore, John, a citizen of United States, having an address of
      15214 T C Jester Blvd
      Houston, Texas 77068
      United States
      Email Address: XXXX
Correspondence Information (current):
      JEFFREY M. FURR
      PRIMARY EMAIL FOR CORRESPONDENCE: JeffMFurr@FurrLawFirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Jeffrey M. Furr
      PRIMARY EMAIL FOR CORRESPONDENCE: JeffMFurr@FurrLawFirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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).

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use PREMIUM in classes 16, 25 and 28 apart from the mark as shown.


Miscellaneous Statement
The applicant seeks registration of the mark on the Supplemental Register in classes 42 and 45 only. Documents with information requested regarding the goods and services associated with applicant's mark are attached.

JPG file(s):
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-26001009b12ba41359cf7937f6d2cf36-20200527140315849435_._premiumdomainnameattachment.pdf
Converted PDF file(s) ( 13 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10
Miscellaneous File11
Miscellaneous File12
Miscellaneous File13

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /jmf/      Date: 05/27/2020
Signatory's Name: Jeffrey M. Furr
Signatory's Position: Attorney of record
Signatory's Phone Number: 740-817-2381


Response Signature
Signature: /jmf/     Date: 05/27/2020
Signatory's Name: Jeffrey M. Furr
Signatory's Position: Attorney of record

Signatory's Phone Number: 740-817-2381

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:    JEFFREY M. FURR
   FURR LAW FIRM
   
   2622 DEBOLT ROAD
   UTICA, Ohio 43080
Mailing Address:    Jeffrey M. Furr
   FURR LAW FIRM
   2622 DEBOLT ROAD
   UTICA, Ohio 43080
        
Serial Number: 88673832
Internet Transmission Date: Wed May 27 14:19:30 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200527141930715785-88673832-
7107c1093bfd93cc03c7e6d94778726536a7322f
bc1f29961b7702953998ebb9-N/A-N/A-2020052
7140315849435