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. 90027843 OSPREY(Standard Characters, see http://uspto.report/TM/90027843/mark.png) has been amended as follows:

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

Applicant appreciates indication that the refusal does not refer to class 19 and understands the application will proceed to publication for at least class 19.

Applicant’s amended description in Class 22 overcomes the rejection in light of the differences in the respective goods, lack of evidence of relatedness of the particular straps with respect to boats or fishing boats, etc., and also in light of the coexistence of the registered marks of record of OSPREY and OSPREY ROCKY MOUNT CORD CO. (and design), and the registered mark OSPREY in class 22 for “Canopies comprised primarily of tensile fabric membranes.” (U.S. Reg. No. 4,705,360)(TESS Sheet attached as Exhibit A). The coexistence of these registered marks demonstrates consumers are able to differentiate among the respective marks as applied to the related and/or unrelated goods, despite have a common term.

Moreover, viewing the marks in their entireties, as is required, includes addressing all elements of a mark, including the disclaimed portions and graphics and style. While ROCKY MOUNT CORD CO. may be disclaimed, it is improper to ignore those terms. Shen Mfg. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004) (“The disclaimed elements of a mark, however, are relevant to the assessment of similarity … This is so because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed.”). These terms and the Design/style elements also contribute to the overall commercial impression of the mark, and further work to dispel confusion. Because the marks on their face or so different, and combined with the different elements and differences in goods, the DuPont factors strongly favor Applicant, and withdrawal of the rejection is warranted.

EVIDENCE
Evidence has been attached: Exhibit A as referred to in the Argument
Original PDF file:
evi_474114463-20210316171 358026646_._Exhibit_A.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 022 for Bungee cords; ropes not of metal; all-purpose nylon straps; mooring cables not of metal; ropes for marine use; anchoring ropes
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.


Proposed:

Tracked Text Description: Bungee cords; All-purpose nylon straps; ropes not of metal; mooring cables not of metal; ropes for marine use; anchoring ropesClass 022 for All-purpose nylon straps
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


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: PLM Global Logistics, LLC, a limited liability company legally organized under the laws of Wisconsin, having an address of
      526 Water Street
      Eau Claire, Wisconsin 54702
      United States
      Email Address: XXXX
      715-835-5232
Proposed: PLM Global Logistics, LLC, a limited liability company legally organized under the laws of Wisconsin, having an address of
      526 Water Street
      Eau Claire, Wisconsin 54702
      United States
      Email Address: XXXX
      715-835-5232
Correspondence Information (current):
      ANTHONY J. BOURGET
      PRIMARY EMAIL FOR CORRESPONDENCE: abourget@bourgetlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): administrator@bourgetlaw.com

The docket/reference number is 2733.0006.
Correspondence Information (proposed):
      Anthony J. Bourget
      PRIMARY EMAIL FOR CORRESPONDENCE: abourget@bourgetlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): administrator@bourgetlaw.com

The docket/reference number is 2733.0006.

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: /anthony j. bourget/     Date: 03/16/2021
Signatory's Name: Anthony J. Bourget
Signatory's Position: Attorney of Record, Wisconsin Bar Member

Signatory's Phone Number: 715-835-5232 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:    ANTHONY J. BOURGET
   BOURGET LAW, S.C.
   P.O. BOX 81
   1119 REGIS COURT, STE. 110
   EAU CLAIRE, Wisconsin 54702
Mailing Address:    Anthony J. Bourget
   BOURGET LAW, S.C.
   P.O. BOX 81
   1119 REGIS COURT, STE. 110
   EAU CLAIRE, Wisconsin 54702
        
Serial Number: 90027843
Internet Transmission Date: Tue Mar 16 17:27:40 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20210316172740216
987-90027843-770606c2d65cb339424e4866c27
5682866f7e39da6cec831649a49ca1833c4322-N
/A-N/A-20210316171358026646