To Whom It May Concern:

I hope that all is well. This is a humble attemp to respond to the Office Action sent to me
be e-mail for my trademark application for the “Fremont Athletics” (SERIAL
NO: 77/082309 ). I do not have the funds to hire a lawyer to represent me and so I
hope to fulfill the requirements presented to me by the examining attorney appropriatley.
I realize that a lawyer could have done a more proper job, and increase my chance of
saving my application, but I have to make do with what resources I have.

The Office Action notes that my trademark application was refused based on three (3)
items: Similar registered Trademark, Ornamental Refusal and a need for a Disclaimer. I
hope to address those three items.

1-Similar registered Trademark:

The office action states;

“The Office records have been searched and no similar registered mark has been found that would bar
registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, please
be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to
registration.”

I found that a search for “fremont” in the USPTO database (Tess) returns with a number
of results and two of them consist soley of the word “Fremont”. They are;

Serial Number 78785297

Word Mark FREMONT

Serial Number 77208476

Word Mark FREMONT

I feel that both of these trademarks were allowed even though they have used the word Fremont in
their trademark. Although Fremont is a geographical location, the script and placement of the word
would allow people to see that there is a difference in the use. Also, my trademark not only has the
word ”Fremont” but also has the word “Athletics” thus showing that there is a clear difference between
my mark and the other similar marks.

The trademark application mentioned by the examining attorney, (pending Application Serial No.
77015618) does use the word “Fremont” in their trademark but I feel there are two differences; One, is
that the word “Fremont” is followed by two “F’s” back to back, and that is different from my use of
“Fremont” followed by the word “Athletics” written within two circles. Two, they describe their
trademark as “an abstract design and a stylized text of the wording ‘Fremont’”. Again, I feel that my
trademark differs due to having the word “Athletics” attached to it, the presentation being different
(written in two circles) and the script that it is written in is different.

2-Ornamental Refusal:

The office action states;

“Registration is refused on the Principal Register because the proposed mark, as used on the
specimen of record, is merely a decorative or ornamental feature of the goods; it does not function as
a trademark to identify and distinguish applicant’s goods from those of others and to indicate their
source. Trademark Act Sections 1, 2 and 45, 15 U.S.C . §§1051-1052 and 1127; see In re Owens-
Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc.,
296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L. , 5 USPQ2d 1451 (TTAB
1987); TMEP §§1202.03 et seq.”

And that for me to address this I would have to do one of four items and I chose number 2 which is;

(2) Submitting evidence that the proposed mark is an indicator of secondary source or
sponsorship for the identified goods. Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33
USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982). That is,
applicant may submit evidence showing that the proposed mark would be recognized as a
trademark through applicant’s use of the mark with goods or services other than those identified
here. In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984). Applicant must
establish that, as a result of this use in connection with other goods or services, the public
would recognize applicant as the secondary source of, or sponsor for, the identified
goods. See TMEP §1202.03(c);

I have found that there are other clothing companies with registered trademarks and that
they use their logo on a placement on the front of a hat. The specimen that I submitted for
proof of commercial use was a hat with the logo embroidered on the hat. Although we
have also sold t-shirts with the same logo on the front, we failed to submit those as
supporting evidence.

One company that I found that uses their logo on a hat as a distinctive logo is the DC
Shoe Co. They have their trademark registered with the following serial numbers:

DC Shoes serial numbers

78394667

76003245

75528674

75159095
They use as their company name the letters “D” and “C” and the words “Shoes”
(definitions of which I extracted from the online encyclopedia ”wikipedia”). Each of
those three items would not be able to used as registered trademark but what they register
as is the combination along with the style of writing. I feel that my application is similar
to this in that it uses words that cant be registered in and of themselves but what I am
seeking is registering the combination with the style of the presentation. Below (and sent
as an attachment) are three pictures showing the DC Shoe Logo, the use of the logo on
the front of a hat (as I did with my trademark on the specimen I submitted), and the use of
the logo on a t-shirt as is usual (and as we did but did not submit).

D is the fourth letter in the Latin alphabet. Its name in English is spelled dee or
occasionally de (IPA: /di? /).[1] (http://en.wikipedia.org/wiki/D)

C is the third letter in the Latin alphabet. Its name in English is spelled cee or oc
casio nally ce (IPA: /si? /).[1] (http://en.wikipedia.org/wiki/C)

A shoe is an item of footwear. Shoes may vary from a simple flip-flop to a complex boot.
Shoes may have high or low heels, although in western cultures, high heels are
considered a woman’s style. Shoe materials include leather or canvas. Athletic shoe soles
may be made of rubber. (http://en.wikipedia.org/wiki/Shoe)

The DC Shoe Co Logo

An example of a DC Shoe Co Hat with the company logo

An example of a DC Shoe Co T Shirt with the company logo
3-Disclaimer

The office action states;

“The applicant must disclaim the geographically descriptive wording “FREMONT ” apart from the mark as
shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is
primarily geographically descriptive because the applicant is from Fremont . Therefore, a goods/place
association is presumed.

In addition, The applicant must disclaim the descriptive wording “ATHLETICS” apart from the mark as
shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is
merely descriptive because it describes a feature of the clothing, namely, that they are for use in
athletics.”

The suggestion by the examining attorney that I add the wording as follows;

No claim is made to the exclusive right to use FREMONT ATHLETICS apart from the mark as shown.

I want to have this wording added to our trademark application. I feel that this would be
similar to the DC Shoe Company disclaimer mentioned due to their use of the word
“shoe” that cant really be trademark. The disclaimer reads; “

“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “SHOES” APART FROM
THE MARK AS SHOWN”

This completes my attempt to address the points made by the examinig attorney. I realize
that the examining attoryney is versed in the Patent and Trademark law whereas I am a
layman, but I hope that what I have presented will at least allow me to “keep my foot in
the door”.
Thank you for your time

Rami Nsour
510-754-4352 cell phone
[email protected]
36454 Alicante Dr
Fremont, CA 94536