Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form No Form Number (Rev 01/2012) |
OMB No. 0651-0055 (Exp 07/31/2018) |
Response to Office Action for Post-Registration Matters
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
73517769 |
REGISTRATION NUMBER |
1382406 |
MARK SECTION |
MARK |
CACHE |
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. |
FORM TEXT |
Registrant thanks the Examining Attorney for the courtesies extended to the undersigned during the telephonic interview with the Examining Attorney
on March 7, 2017. In the Post-Registration Office Action dated November 9, 2016, the U.S. Patent and Trademark Office (“USPTO”) rejected the Section 8 Affidavit of Excusable Nonuse filed by the
Registrant on August 10, 2016, contending that the special circumstances provided by Registrant for excusing nonuse, i.e., the bankruptcy, was within the control of the owner. As discussed in
the interview, Registrant wishes to clarify that, Cache, Inc., the previous owner of the present registration, was the entity subject to the bankruptcy proceedings, not The Cato Corporation, the
current registrant and present owner of the registration. As detailed in the Affidavit, Registrant purchased and acquired all of Cache, Inc.’s assets, including the present registration, during
Cache, Inc.’s bankruptcy proceedings. As stated in the TMEP § 1604.11, "[t]emporary nonuse due to the sale of business might be considered excusable.” Accordingly, Registrant submits the
temporary forced suspension of use of the CACHE mark due to Cache, Inc.’s bankruptcy and Registrant’s purchase and acquisition of Cache, Inc.’s assets constitutes "special circumstances beyond the
owner's control" and excusable nonuse under Section 8(b)(2) of the Trademark Act (15 U.S.C. §1058(b)(2)). Since the purchase and acquisition of Cache, Inc.’s assets, Registrant has been engaged
in integrating the purchased assets into its existing business and developing the CACHE product lines and marketing strategies. The integration has taken longer than anticipated, and Registrant
anticipates offering the CACHE product line sometime between summer and fall of 2017. As discussed during the telephonic interview, Registrant purchased and acquired additional registrations
from Cache, Inc. during the same bankruptcy proceeding, for which Registrant has filed, and the USPTO has accepted, Section 8 Affidavit of Excusable Nonuse, including U.S. Service Mark and/or
Trademark Registration Nos. 1,351,848 (CACHE & Design); 3,521,804 (CACHÉ CONTOUR COLLECTION); 3,521,805 (CACHÉ CONTOUR COLLECTION & Design); and 3,645,054 (CACHE LUXE). |
Substitute specimen bypass warning provided |
The filer has elected to bypass the checkbox indicating that a substitute specimen was in use in commerce during the relevant period for filing the 6-year or 10-year Section
8/71. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/hbw/ |
SIGNATORY'S NAME |
Henry B. Ward, III |
SIGNATORY'S POSITION |
Attorney of record, North Carolina bar member |
SIGNATORY'S PHONE NUMBER |
7043311027 |
DATE SIGNED |
03/13/2017 |
SUBMISSION SIGNATURE |
/hbw/ |
SIGNATORY'S NAME |
Henry B. Ward, III |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
7043311027 |
DATE SIGNED |
03/13/2017 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Mar 13 14:54:46 EDT 2017 |
TEAS STAMP |
USPTO/TRS-XX.XXX.XXX.XXX-
20170313145446137138-1382
406-20170313132229284620-
N/A-N/A-20170313132229284
620 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form No Form Number (Rev 01/2012) |
OMB No. 0651-0055 (Exp 07/31/2018) |
Response to Office Action for Post-Registration Matters
To the Commissioner for Trademarks:
The following is submitted for registration number.
1382406 CACHE
FORM INFORMATION
Registrant thanks the Examining Attorney for the courtesies extended to the undersigned during the telephonic interview with the Examining Attorney on March 7, 2017. In the
Post-Registration Office Action dated November 9, 2016, the U.S. Patent and Trademark Office (“USPTO”) rejected the Section 8 Affidavit of Excusable Nonuse filed by the Registrant on August 10, 2016,
contending that the special circumstances provided by Registrant for excusing nonuse, i.e., the bankruptcy, was within the control of the owner. As discussed in the interview, Registrant wishes
to clarify that, Cache, Inc., the previous owner of the present registration, was the entity subject to the bankruptcy proceedings, not The Cato Corporation, the current registrant and present owner
of the registration. As detailed in the Affidavit, Registrant purchased and acquired all of Cache, Inc.’s assets, including the present registration, during Cache, Inc.’s bankruptcy
proceedings. As stated in the TMEP § 1604.11, "[t]emporary nonuse due to the sale of business might be considered excusable.” Accordingly, Registrant submits the temporary forced
suspension of use of the CACHE mark due to Cache, Inc.’s bankruptcy and Registrant’s purchase and acquisition of Cache, Inc.’s assets constitutes "special circumstances beyond the owner's control"
and excusable nonuse under Section 8(b)(2) of the Trademark Act (15 U.S.C. §1058(b)(2)). Since the purchase and acquisition of Cache, Inc.’s assets, Registrant has been engaged in integrating
the purchased assets into its existing business and developing the CACHE product lines and marketing strategies. The integration has taken longer than anticipated, and Registrant anticipates
offering the CACHE product line sometime between summer and fall of 2017. As discussed during the telephonic interview, Registrant purchased and acquired additional registrations from Cache,
Inc. during the same bankruptcy proceeding, for which Registrant has filed, and the USPTO has accepted, Section 8 Affidavit of Excusable Nonuse, including U.S. Service Mark and/or Trademark
Registration Nos. 1,351,848 (CACHE & Design); 3,521,804 (CACHÉ CONTOUR COLLECTION); 3,521,805 (CACHÉ CONTOUR COLLECTION & Design); and 3,645,054 (CACHE LUXE). The filer has elected to
bypass the checkbox indicating that a substitute specimen was in use in commerce during the relevant period for filing the 6-year or 10-year Section 8/71.
Warning: If you are providing a
substitute specimen and do not provide the required statement verifying use, upon review of your response, if it is determined that verification is required, another Office action will issue
requiring this statement to complete your response.
SIGNATURE(S)
Declaration Signature
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may
jeopardize the validity of the application, submission, or any registration resulting therefrom, declares that the facts set forth above are true; all statements made of his/her own knowledge are
true; and all statements made on information and belief are believed to be true.
Signature: /hbw/ Date: 03/13/2017
Signatory's Name: Henry B. Ward, III
Signatory's Position: Attorney of record, North Carolina bar member
Signatory's Phone Number: 7043311027
Submission Signature
Signature: /hbw/ Date: 03/13/2017
Signatory's Name: Henry B. Ward, III
Signatory's Position: Attorney of Record
Signatory's Phone Number: 7043311027
Serial Number: 73517769
Internet Transmission Date: Mon Mar 13 14:54:46 EDT 2017
TEAS Stamp: USPTO/TRS-XX.XXX.XXX.XXX-201703131454461
37138-1382406-20170313132229284620-N/A-N
/A-20170313132229284620