| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76493700 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
REMARKS
Now comes the Applicant Samuel Louis Paul, by and through his counsel of record and responds to October 29, 2007 Non-final Office Action as responds as follows
Description of Goods and Services
The Office had indicated that the present description of services is inadequate and has suggested that the description be amended to read:
“Wholesale distributorships featuring [specify, e.g., house wares, clothing]; direct marketing advertising for others, in class 035.”
The Applicant thanks the Examining Attorney for the Examining Attorney’s assistance in this matter, and respectfully requests that the description of services be amended as follows:
“wholesale distribution services featuring household goods, namely house wares and wire extension cords, but not including ladders or components thereof; and pet support products, namely pet food, pet treats, and pet accessories in class 035.”
New Substitute Specimen The Office had indicated that submitted substitute Specimen was unacceptable for not showing the use of the service mark in relation to the identified service. In particular, the substitute specimen failed to make any reference to the applicant’s actual marketing services, and fails to identify any particular goods, which the applicant distributes.
The Applicant has submitted a new substitute specimen that was distributed as an advertising flyer as early as the filing of the present application. The flyer does make reference to Applicant’s services as a wholesale distributor for a wide variety of household products.
Although the flyer does not make reference to applicant’s marketing advertising services of goods, the Applicant has presently requested the amendment the description of services to drop that reference of “marketing advertising services of goods.”
Likelihood of Confusion-Similarity of Marks/Similarity of Goods/Services:
The Office has refused registration based on likelihood of confusion based on the similarity of the mark with US registration 25973525, 2609366, and 2726153 (e.g., 1] NEXTEP for “metal ladders and metal steps with or without plastic covering that are installed on wall and structures to form a ladders, and non-metal ladders and non-metal steps that are installed on wall and structures to form a ladders; 2] NEXTEP for metal articles used with manholes, namely metal cover, metal footholds and metal panels; concrete manholes and plastic manholes; and manhole construction; and 3] NEXTEP for orthopedic device, namely walkers for medical use.)
The Applicant respectfully incorporates all previously stated agreements to this issue and further respectfully argues that the new substitute specimen and requested amendments show that the Applicant has been and is now a wholesale distributor of household goods. In particular, the Applicant has excluded in its description of services that it provides, ladders and ladder parts as being part of the household goods that it handles. Further, it can be safely argued that manholes, manhole covers, concrete, plastic, or otherwise are generally not accepted as being a household product. Similarly, an orthopedic walker is a specialized medical/physical therapy implement and generally not associated as being within the spectrum of ordinary household products.
The Applicant believes as such that the three prior cited US registrations would no longer be confused with present application’s service mark on the basis of the services that Applicant provides.
Additional Information Required The Office has requested that the Applicant submit samples of advertisements or promotional materials for the identified services because the nature of the services in connection with which applicant uses the mark is not clear from the record. In addition, applicant must describe in some detail the nature purpose and channels of trade of the services listed in the application.
The Applicant is the president of the Nevada Corporation, Nextep Inc., to which Applicant has licensed the service mark NEXTEP. Nextep, Inc is a wholesale distributor of household goods such as trash bin, trash bags, and trash bag storage devices, electrical cords, as well as pet-related goods such as pet foods, pet treats, pet accessories (e.g. leases, toys, etc.) Nextep, Inc. contracts with third party manufacturers to make these items, then wholesales the items to national and regional retail store chains such as Wal-Mart, Albertsons, Dollar Store, and the like. As such, Nextep, Inc. constantly seeks out inventors to license their new products as a Nextep product lines, which Nextep will provide wholesale distribution to national and regional retail store chains.
In addition, Nextep, Inc. has acquired the trademark rights to US registered trademark BRAWNY for use with plastic food baggies, and to US registered trademark BLACK AND DECKER for use with wire extension cords. Nextep contracts with third-party manufacturers to make these products in which Nextep with package the goods with the licensed trademark name and then wholesale distribute the packaged goods to national and regional retail store chains.
The Applicant in this response has submitted additional advertising material in the way of an advertising flyer.
Conclusion:
The Applicant respectfully points out that the 6-month deadline (April 29, 2007) responding to the present October 29, 2006 Office Action, fell upon a weekend day (i.e., Sunday) hence a following weekday, Monday, October 30, 2007 is the proper last day for filing a Response to the Office Action.
The Applicant believes that it has fully responded to the issues raised in the October 29, 2006 non-final office action. The Applicant thanks the Examining Attorney for all the time and effort the Examining Attorney had expended upon the present application. The Applicant requests that if the Examining Attorney has further questions or requests in this matter that he contact the counsel of record to further expedite matters.
Respectfully submitted. By:
John D. Long Counsel for Applicant
Long & Chybik 1575 Delucchi Lane Suite 115 Reno, Nevada 89502
V: 775/827-8767 PST F: 775/827-0363 E: renopatents@aol.com |
|
| EVIDENCE SECTION | |
| DESCRIPTION OF EVIDENCE FILE | Advertisement flyer |
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| INTERNATIONAL CLASS | 040 |
| DESCRIPTION | |
| wholesale distribution services and direct marketing advertising services of goods | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 09/01/2000 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/01/2000 |
| GOODS AND/OR SERVICES SECTION (class added) Original Class (040) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| wholesale distribution services featuring household goods, namely house wares and wire extension cords, but not including ladders or components thereof; and pet support products, namely pet food, pet treats, and pet accessories in class 035 | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 09/01/2000 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/01/2000 |
| STATEMENT TYPE | "The substitute specimen(s) was in use in commerce as of the filing date of the application." |
| SPECIMEN FILE NAME(S) |
\\TICRS2\EXPORT12\764\937 \76493700\xml1\ROA0002.JP G |
| SPECIMEN DESCRIPTION | advertisement flyer |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /samuel louis paul/ |
| SIGNATORY'S NAME | Samuel Louis Paul |
| SIGNATORY'S POSITION | Applicant |
| DATE SIGNED | 04/30/2007 |
| RESPONSE SIGNATURE | /john d. long/ |
| SIGNATORY'S NAME | John D. Long |
| SIGNATORY'S POSITION | Counsel for Applicant |
| DATE SIGNED | 04/30/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 30 22:59:23 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0070430225923561205-76493 700-370de9c42a2f3314cb849 7cc91edea044dd-N/A-N/A-20 070430224622604333 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
REMARKS
Now comes the Applicant Samuel Louis Paul, by and through his counsel of record and responds to October 29, 2007 Non-final Office Action as responds as follows
Description of Goods and Services
The Office had indicated that the present description of services is inadequate and has suggested that the description be amended to read:
“Wholesale distributorships featuring [specify, e.g., house wares, clothing]; direct marketing advertising for others, in class 035.”
The Applicant thanks the Examining Attorney for the Examining Attorney’s assistance in this matter, and respectfully requests that the description of services be amended as follows:
“wholesale distribution services featuring household goods, namely house wares and wire extension cords, but not including ladders or components thereof; and pet support products, namely pet food, pet treats, and pet accessories in class 035.”
New Substitute Specimen
The Office had indicated that submitted substitute Specimen was unacceptable for not showing the use of the service mark in relation to the identified service. In particular, the substitute specimen failed to make any reference to the applicant’s actual marketing services, and fails to identify any particular goods, which the applicant distributes.
The Applicant has submitted a new substitute specimen that was distributed as an advertising flyer as early as the filing of the present application. The flyer does make reference to Applicant’s services as a wholesale distributor for a wide variety of household products.
Although the flyer does not make reference to applicant’s marketing advertising services of goods, the Applicant has presently requested the amendment the description of services to drop that reference of “marketing advertising services of goods.”
Likelihood of Confusion-Similarity of Marks/Similarity of Goods/Services:
The Office has refused registration based on likelihood of confusion based on the similarity of the mark with US registration 25973525, 2609366, and 2726153 (e.g., 1] NEXTEP for “metal ladders and metal steps with or without plastic covering that are installed on wall and structures to form a ladders, and non-metal ladders and non-metal steps that are installed on wall and structures to form a ladders; 2] NEXTEP for metal articles used with manholes, namely metal cover, metal footholds and metal panels; concrete manholes and plastic manholes; and manhole construction; and 3] NEXTEP for orthopedic device, namely walkers for medical use.)
The Applicant respectfully incorporates all previously stated agreements to this issue and further respectfully argues that the new substitute specimen and requested amendments show that the Applicant has been and is now a wholesale distributor of household goods. In particular, the Applicant has excluded in its description of services that it provides, ladders and ladder parts as being part of the household goods that it handles. Further, it can be safely argued that manholes, manhole covers, concrete, plastic, or otherwise are generally not accepted as being a household product. Similarly, an orthopedic walker is a specialized medical/physical therapy implement and generally not associated as being within the spectrum of ordinary household products.
The Applicant believes as such that the three prior cited US registrations would no longer be confused with present application’s service mark on the basis of the services that Applicant provides.
Additional Information Required
The Office has requested that the Applicant submit samples of advertisements or promotional materials for the identified services because the nature of the services in connection with which applicant uses the mark is not clear from the record. In addition, applicant must describe in some detail the nature purpose and channels of trade of the services listed in the application.
The Applicant is the president of the Nevada Corporation, Nextep Inc., to which Applicant has licensed the service mark NEXTEP. Nextep, Inc is a wholesale distributor of household goods such as trash bin, trash bags, and trash bag storage devices, electrical cords, as well as pet-related goods such as pet foods, pet treats, pet accessories (e.g. leases, toys, etc.) Nextep, Inc. contracts with third party manufacturers to make these items, then wholesales the items to national and regional retail store chains such as Wal-Mart, Albertsons, Dollar Store, and the like. As such, Nextep, Inc. constantly seeks out inventors to license their new products as a Nextep product lines, which Nextep will provide wholesale distribution to national and regional retail store chains.
In addition, Nextep, Inc. has acquired the trademark rights to US registered trademark BRAWNY for use with plastic food baggies, and to US registered trademark BLACK AND DECKER for use with wire extension cords. Nextep contracts with third-party manufacturers to make these products in which Nextep with package the goods with the licensed trademark name and then wholesale distribute the packaged goods to national and regional retail store chains.
The Applicant in this response has submitted additional advertising material in the way of an advertising flyer.
Conclusion:
The Applicant respectfully points out that the 6-month deadline (April 29, 2007) responding to the present October 29, 2006 Office Action, fell upon a weekend day (i.e., Sunday) hence a following weekday, Monday, October 30, 2007 is the proper last day for filing a Response to the Office Action.
The Applicant believes that it has fully responded to the issues raised in the October 29, 2006 non-final office action. The Applicant thanks the Examining Attorney for all the time and effort the Examining Attorney had expended upon the present application. The Applicant requests that if the Examining Attorney has further questions or requests in this matter that he contact the counsel of record to further expedite matters.
Respectfully submitted.
By:
John D. Long
Counsel for Applicant
Long & Chybik
1575 Delucchi Lane
Suite 115
Reno, Nevada 89502
V: 775/827-8767 PST
F: 775/827-0363
E: renopatents@aol.com
