| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76507410 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| Registration has been refused on the Principal Register because the Examining Attorney considers the mark to be merely descriptive of the goods listed in the application. Applicant respectfully disagrees. Applicant points out that the Patent and Trademark Office has registered identical marks for various goods. The following is a listing of such registrations: Trademark Reg. No. Goods Class Status BLACK CLASSIC 2305091 Brooms 21 Registered BLACK CLASSIC 1299507 Mink pelts 18 Registered CLASSIC BLACK 1188635 Pens and pencils 16 Registered Clearly, Applicant's mark cannot be considered to be merely descriptive when the Patent and Trademark Office has issued other registrations for idential marks used on different goods. Further, Applicant points out that its mark CLASSIC BLACK does not describe the goods, namely, non-electric cookware. As a matter of fact, CLASSIC BLACK could mean several things. The mark is not, therefore, merely descriptive. Accordingly, Applicant respectfully requests the Examining Attorney withdraw the refusal to register on the basis that the mark is considered to be merely descriptive. It is noted that a search of the Patent and Trademark Office records failed to show that Applicant's mark so resembles any registered mark as to be likely to cause confusion, mistake or deception. In view of the foregoing remarks, it is believed that this application is now in condition for prompt publication and favorable action is requested. | |
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| INTERNATIONAL CLASS | 006 |
| DESCRIPTION | |
| cookware, bakeware, serving and storing vessels, metal racks and replacement parts therefor | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (class added) | |
| INTERNATIONAL CLASS | 021 |
| DESCRIPTION | |
| Non-electric cookware, namely baking dishes, casserole dishes and serving dishes | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| SIGNATURE | /nancy dowling/ |
| SIGNATORY NAME | Nancy Dowling |
| SIGNATORY POSITION | Chief Intellectual Property Counsel |
| SIGNATORY DATE | 02/19/2004 |
| SIGNATURE | /nancy dowling/ |
| SIGNATORY NAME | Nancy Dowling |
| SIGNATORY POSITION | Chief Intellectual Property Counsel |
| SIGNATORY DATE | 02/19/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Feb 19 12:15:44 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20040 219121544601033-76507410- 200c9df8c4e1d7b98b55d8932 bb76dfaf1-N-N-20040219114 321572159 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76507410 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| Registration has been refused on the Principal Register because the Examining Attorney considers the mark to be merely descriptive of the goods listed in the application. Applicant respectfully disagrees. Applicant points out that the Patent and Trademark Office has registered identical marks for various goods. The following is a listing of such registrations: Trademark Reg. No. Goods Class Status BLACK CLASSIC 2305091 Brooms 21 Registered BLACK CLASSIC 1299507 Mink pelts 18 Registered CLASSIC BLACK 1188635 Pens and pencils 16 Registered Clearly, Applicant's mark cannot be considered to be merely descriptive when the Patent and Trademark Office has issued other registrations for idential marks used on different goods. Further, Applicant points out that its mark CLASSIC BLACK does not describe the goods, namely, non-electric cookware. As a matter of fact, CLASSIC BLACK could mean several things. The mark is not, therefore, merely descriptive. Accordingly, Applicant respectfully requests the Examining Attorney withdraw the refusal to register on the basis that the mark is considered to be merely descriptive. It is noted that a search of the Patent and Trademark Office records failed to show that Applicant's mark so resembles any registered mark as to be likely to cause confusion, mistake or deception. In view of the foregoing remarks, it is believed that this application is now in condition for prompt publication and favorable action is requested. | |
| Classification and Listing of Goods/Services | |
| Applicant hereby deletes the following class of goods/services from the application. | |
| Class 006 for cookware, bakeware, serving and storing vessels, metal racks and replacement parts therefor | |
| Applicant hereby adds the following class of goods/services to the application: |
|
| New: Class 021 for Non-electric cookware, namely baking dishes, casserole dishes and serving dishes |
|
| Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)). | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in connection with the goods and/or services listed in the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true as set forth within the original application and/or the submitted amendment/response. | |
| Signature: /nancy dowling/ Date: 02/19/2004 | |
| Signatory's Name: Nancy Dowling | |
| Signatory's Position: Chief Intellectual Property Counsel | |
| Response Signature | |
| Signature: /nancy dowling/ Date: 02/19/2004 | |
| Signatory's Name: Nancy Dowling | |
| Signatory's Position: Chief Intellectual Property Counsel | |
| Serial Number: 76507410 | |
| Internet Transmission Date: Thu Feb 19 12:15:44 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20040219121544601033 -76507410-200c9df8c4e1d7b98b55d8932bb76d faf1-N-N-20040219114321572159 |