| 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 |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 90157981 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | THUNDERBOLT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Dear Mr. Lapter,
As you and I discussed in our telephone call a few weeks ago, I am responding to your January 12, 2021, 2(d) Office Action, citing U.S. Registration No. 4516251 (Design Mark
of Lightning Bolt), and Application Serial No. 8880449 EL RAYO, (Lightning for Tequila).
Initially, I wanted to invoke my client's prior registration for REDWOOD EMPIRE THUNDERBOLT, Registration No. 6257666, for spirits, and hoped that this affiliated
registration would support this Application to overcome your 2(d) refusal.
Additionally, I wanted to note that the design mark for Registration 4516251 on a bottle of "moonshine" is a reference to "white lightning," an historic reference to
moonshine, not a thunderbolt. Indeed, the Registrant describes the design as "a bolt of lightning." (See Office Action, p.2 of 7)
Finally, the Google Translate for EL RAYO is also Lightning, not thunderbolt, as previously described on the Applicant's website. Indeed the same owner abandoned a prior
application (No. 88205301), after the Examining Attorney issued an Office Action stating "Furthermore, the attached evidence from the applicant’s website shows the term “El
Rayo” in large bold text on the label identifying the applicant’s goods with the remainder of the mark “Ha Vuelto” in significantly smaller text at the bottom of the label. The webpage also shows the
applicant using the phrase “the lightning” which translates to “el rayo” when talking about their goods on the webpage. Therefore, the term “Rayo” is a dominant portion of the mark and is
significant to establishing its commercial impression." It is reasonable that applicant's change from "the lightning" to "thunderbolt" is a recent effort to avoid another Office Action.
Given the prior affiliated registration, and the differences in these prior Lightning trademarks, we do hope that you'll reconsider. Please do not hesitate to contact me with
any questions.
Thank you.
Kit Knudsen |
|
| CORRESPONDENCE INFORMATION (current) | |
| NAME | KIT KNUDSEN |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | kit@commins.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | blair@commins.com |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Kit Knudsen |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | kit@commins.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | blair@commins.com |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kit Knudsen/ |
| SIGNATORY'S NAME | Kit Knudsen |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 510-926-5081 |
| DATE SIGNED | 05/17/2021 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Signed directly within the form |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 17 17:53:22 ET 2021 |
| TEAS STAMP | USPTO/ROA-XXX.X.XX.XX-202 10517175322590045-9015798 1-780efca3dde4fbf5a5953a8 0ca8d752c939fb69e4caf3219 55199d52a6359794a-N/A-N/A -20210517173859080674 |
| 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 |