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. 90654782 FN EVOLYS(Standard Characters, see http://uspto.report/TM/90654782/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 013 for Firearms; Machine guns (arms); Machine gun ranges incorporating systems for measuring, inspecting, monitoring and analyzing the operation thereof; Ammunition, bullets and projectiles for machine guns; Machine gun chargers; Silencers for machine guns; Ammunition belts for machine guns; Ammunition casing receivers for machine guns; Sights, other than telescopic sights, for machine guns; Bipods and tripods for machine guns; Spare barrels for machine guns; Machine gun components
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 018427678 filed 03/15/2021]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Firearms; Machine guns (arms); Machine guns; Machine gun ranges incorporating systems for measuring, inspecting, monitoring and analyzing the operation thereof; Ammunition, bullets and projectiles for machine guns; Machine gun chargers; Silencers for machine guns; Ammunition belts for machine guns; Firearm parts, namely, ammunition casing receivers for machine guns; Ammunition casing receivers for machine guns; Sights, other than telescopic sights, for machine guns; Bipods and tripods for machine guns; Spare barrels for machine guns; Machine gun componentsClass 013 for Firearms; Machine guns; Ammunition, bullets and projectiles for machine guns; Machine gun chargers; Silencers for machine guns; Ammunition belts for machine guns; Firearm parts, namely, ammunition casing receivers for machine guns; Sights, other than telescopic sights, for machine guns; Bipods and tripods for machine guns; Spare barrels for machine guns; Machine gun components
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 018427678 filed 03/15/2021]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:

Current:
Class 028 for Games; Toys; Machine gun toy models and replicas; Projectiles and ammunitions for machine gun toy models, models and replicas; Machine gun toy models, models and replicas for virtual shooting; Gaming apparatus for use with machine gun replicas for virtual shooting other than for use with a separate display screen or a monitor
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 018427678 filed 03/15/2021]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Games; Games and toys, namely, machine gun toy models and replicas, projectiles and ammunitions for machine gun toy models, models and replicas, machine gun toy models, models and replicas for virtual shooting, gaming apparatus for use with machine gun replicas for virtual shooting other than for use with a separate display screen or a monitor; Toys; Machine gun toy models and replicas; Projectiles and ammunitions for machine gun toy models, models and replicas; Machine gun toy models, models and replicas for virtual shooting; Gaming apparatus for use with machine gun replicas for virtual shooting other than for use with a separate display screen or a monitorClass 028 for Games and toys, namely, machine gun toy models and replicas, projectiles and ammunitions for machine gun toy models, models and replicas, machine gun toy models, models and replicas for virtual shooting, gaming apparatus for use with machine gun replicas for virtual shooting other than for use with a separate display screen or a monitor
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 018427678 filed 03/15/2021]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant wishes to maintain the dual basis for registrability and requests suspension of the application pending the issuance of the foreign basis registration, which it is anticipated will eventually be solely relied upon for publication and issuance of this application. Based upon the foregoing, it is respectfully submitted that all further proceedings regarding this application be suspended pending the issuance of the corresponding foreign priority basis application.

Correspondence Information (current):
      BURTON S. EHRLICH
      PRIMARY EMAIL FOR CORRESPONDENCE: CHIUSTM@LADAS.NET
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 3T21744012.
Correspondence Information (proposed):
      Burton S. Ehrlich
      PRIMARY EMAIL FOR CORRESPONDENCE: CHIUSTM@LADAS.NET
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 3T21744012.

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: /bsehrlich/     Date: 05/09/2022
Signatory's Name: Burton S. Ehrlich
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 3124271300 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:    BURTON S. EHRLICH
   LADAS & PARRY LLP
   SUITE 1600
   224 S. MICHIGAN AVENUE
   CHICAGO, Illinois 60604
Mailing Address:    Burton S. Ehrlich
   LADAS & PARRY LLP
   SUITE 1600
   224 S. MICHIGAN AVENUE
   CHICAGO, Illinois 60604
        
Serial Number: 90654782
Internet Transmission Date: Mon May 09 11:24:26 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202205091124265
26057-90654782-8003039d971e346076a867314
08c9a7438ac7d3eea5ec7e5b7e867612073f4cb-
N/A-N/A-20220509112032767267