PR-Teas-Response to Post Reg Office Act

Global Format; No Form Number (Rev 8/2009)

OMB No. 0651-0055 (Exp. 07/31/2018)

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Global Format; No Form Number (Rev 8/2009)

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. 2410914 ALTERNA :

FORM INFORMATION

        RESPONSE

Dear Sir:

Applicant respectfully submits the following in response to the Post Registration Office Action dated January 4, 2011.

Applicant respectfully requests reconsideration in view of the following Remarks.

 

REMARKS

            In the Post Registration Office Action dated January 4, 2011, the Trademark Specialist has requested additional information explaining the use/nonuse of the mark.  Registrant separately addresses each of the goods described in the Registration, in turn.

 

 

“solutions”

            The Registrant is using or is using through a related company or licensee the mark in commerce on or in connection with “non-medicated hair care preparations, namely, solutions” recited in the Registration, as evidenced by the attached specimen(s) showing the mark as used in commerce.

 

 

“cosmetic preparations for the hands and body, namely, sunscreens”

With regard to the goods “cosmetic preparations for the hands and body, namely, sunscreens,” Registrant discontinued shipping its Ten Skin Therapy Sunscreen on November 16, 2010.  In Registrant’s experience, however, the goods like remain in the marketplace for approximately one year after shipping ceased.  Therefore, Registrant expects that ALTERNA branded sunscreens remain in the retail marketplace to this day.  Moreover, Registrant plans to release a new product containing sunscreen in August of 2011 – approximately one month from now.  For the foregoing reasons, Registrant respectfully submits that its temporary suspension in shipping sunscreens is not due to an intention to abandon the mark and, therefore, requests that the Registration remain in force with respect to these goods.

 

“waving, and permanent waving solutions”

With respect to the goods “waving, and permanent waving solutions” recited in the Registration, Registrant ceased shipping these goods approximately six years ago, because a critical ingredient required in the making of the product was not permitted in Europe.  Because Registrant manufactured the same formula for their products in both the United Stated and Europe, Registrant stopped manufacturing goods in both countries in order to redevelop a formulation of goods.  Although registrant is not currently shipping the goods, based Registrant’s experience, the goods likely remained in the marketplace for long after shipping had ceased.

In addition, Registrant is set to release a hair waving product  in commerce in April 2012.  For the foregoing reasons, Registrant respectfully submits that its temporary suspension in manufacturing these goods is not due to an intention to abandon the mark and, therefore, requests that the Registration remain in force with respect to these goods.

The registrant requests that the registration be renewed for the good identified above.

 

Respectfully submitted,

 

Mark B. Mizrahi

Attorney of Record

FORM FILE NAME(S)

Form File1

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.

Submission Signature
Signature: /mark b mizrahi/     Date: 07/05/2011
Signatory's Name: Mark B. Mizrahi
Signatory's Position: Attorney of Record, CA bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the trademark owner's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the trademark owner in this matter: (1) the trademark owner has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the trademark owner has filed a power of attorney appointing him/her in this matter; or (4) the trademark owner's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 7008
RAM Accounting Date: 07/06/2011
        
Serial Number: 75027247
Internet Transmission Date:
TEAS Stamp: USPTO/TRS-XX.XXX.XXX.XX-2011070520445181
7740-2410914-20110705203704532441-DA-700
8-20110705203704532441