To:
`
`Subject:
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`Sent:
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`Sent As:
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`Stone Age Equipment, Inc. (mike@nadesanbeck.com)
`
`U.S. TRADEMARK APPLICATION NO. 87026754 - KESTREL - N/A
`
`8/18/2016 12:41:27 PM
`
`ECOM102@USPTO.GOV
`
`Attachments:
`
`Attachment - 1
`Attachment - 2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO.   87026754
`
`           
`
`MARK: KESTREL
`
`CORRESPONDENT ADDRESS:
`  
`       MICHAEL BECK
`  
`       NADESAN BECK PC
`         8 EAST BROADWAY, SUITE 625
`           SALT LAKE CITY, UT 84111
`    
`   
`
`APPLICANT: Stone Age Equipment, Inc.
`
`    
`
`*87026754*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S REFERENCE/DOCKET
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`   
`
`  N/A
`
`NO:       
`CORRESPONDENT E-MAIL ADDRESS:        mike@nadesanbeck.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 8/18/2016
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`Prior Pending Application – Potential Refusal to Register
`
`The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered
`marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed
`pending application may present a bar to registration of applicant’s mark.
`
`The filing date of pending U.S. Application Serial No. 86062224 precedes applicant’s filing date.  See attached referenced application.  If the
`mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a
`likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of
`applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced
`application.
`
`In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
`between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits
`applicant’s right to address this issue later if a refusal under Section 2(d) issues.
`
`Color Drawing Submitted – No Color Claim or Color Mark Description
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`The drawing shows the mark in color; however, the application includes a statement that color is not claimed as a feature of the mark and does
`not include a color claim or mark description referencing color.  Applicant must clarify whether color is in fact a part of the mark.  See 37 C.F.R.
`
`§2.61(b).  
`
`Generally, if an applicant submits a color drawing, the applicant must claim color as a feature of the mark, providing a complete list of all the
`colors claimed, and include a description of the literal and design elements that specifies where the colors appear in those elements.  See 37
`C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et. seq.  However, an applicant may amend the mark to delete color if it would not materially alter
`the mark as originally filed.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.07(c), 807.14 et seq.  In this case, an amendment to delete color from the
`mark would not be considered a material alteration and is permitted.  If color is not claimed, the drawing must be depicted in black and white
`
`only.  37 C.F.R. §2.52(b).  
`
`Therefore, applicant must clarify if color is being claimed as a feature of the mark and may respond by satisfying one of the following:
`
`(1) If color is not a feature of the proposed mark, submit a new drawing showing the mark only in black and white.  Amendments or
`changes to the mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72(a)(2); TMEP §807.14.  
`(2) If color is a feature of the proposed mark, provide a complete list of all the colors claimed as a feature of the mark and a mark
`description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1);
`see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. 
`TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them
`from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background,
`outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).
`
`The following color claim and mark description are suggested, if accurate:
`
`Color claim:  “ The colors red, white, and black, are claimed as a feature of the mark.”
`
`Mark description:  “ The mark consists of a red rectangle with white lines that create the impression of a “5” on its side facing the
`northeast, and a “10” on its side facing the southwest. To the immediate right is the black wording “KESTREL.”
`
`See TMEP §807.07(a)(i), (b).
`
`Specimen Unacceptable – Print Advertising Not Proper Form for Goods
`
`Registration is refused because the specimen in International Class 25 consists of advertising material and thus does not show the applied-for
`mark in use in commerce for the identified goods for each international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37
`C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Advertising materials are generally not acceptable as specimens to show use in
`commerce for goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522
`
`(TTAB 1993); TMEP §904.04(b), (c).  
`
`An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each
`international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a);
`
`TMEP §§904, 904.07(a).  
`
`Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
`packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens
`for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP
`
`§904.03(i).  
`
`Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
`
`(1)       
`
`Submit a different specimen (a verified “substitute” specimen ) that (a) was in actual use in commerce at least as early as the
`filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in
`commerce for the goods identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen
`that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: 
`“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 or prior to the filing of the amendment to allege use.”   The substitute specimen cannot be accepted
`without this statement.
`
`(2)       
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`Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate
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`additional fee(s) and filing requirements such as providing a specimen.
`
`For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
`Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain
`situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without
`
`incurring this additional fee.  
`Assistance
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.   See TMEP §§705.02,
`709.06.
`
`/Jordan A. Baker/
`Trademark Examining Attorney
`Law Office 102
`571-272-8844
`jordan.baker@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`Print: Aug 18, 2016
`
`86062224-
`
`DESIGN MARK
`
`serial Number
`86062224
`
`Status
`FIFTH EXTENSION — GRANTED
`
`Word Mark
`KENMARE KESTRELS
`
`Standard Character Mark
`Yes
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`[4]
`STANDARD CHARACTER MARK
`
`Owner
`Warner Bros. Entertainment Inc. CORPORATION DELAWARE 4000 Warner
`Boulevard Burbank CALIFORNIA 91522
`
`GoodSIServices
`
`G & S: Clothing for
`022 039.
`US
`I0 025.
`Class Status -- ACTIVE.
`men, women and children - namely, shirts, t-shirts, sweatshirts,
`jogging suits, trousers, pants, shorts,
`tank tops, rainwear, cloth
`baby bibs, skirts, blouses, dresses, suspenders, sweaters,
`jackets,
`coats, raincoats,
`snow suits, ties, robes, hats, caps, sunvisors,
`belts, scarves, sleepwear, pajamas,
`lingerie, underwear, boots, shoes,
`sneakers, sandals, booties, socks, slipper socks,
`swimwear and
`masquerade and Halloween costumes and masks sold in connection
`therewith.
`
`Filing Date
`2013xchll
`
`Examining Attorney
`KELLY,
`JOHN
`
`Attorney of Record
`Avis Frazier—Thomas
`
`

`

`KENMARE KESTRELS
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Stone Age Equipment, Inc. (mike@nadesanbeck.com)
`
`U.S. TRADEMARK APPLICATION NO. 87026754 - KESTREL - N/A
`
`8/18/2016 12:41:29 PM
`
`ECOM102@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 8/18/2016 FOR U.S. APPLICATION SERIAL NO. 87026754
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 8/18/2016 (or sooner if specified in the Office action).  For information
`regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System
`(TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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