| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Suspension Inquiry or Letter of Suspension
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
76514182 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 109 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/76514182/mark.png |
| LITERAL ELEMENT |
ISLAND GIRL |
| 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. |
| CANCELLATION PROCEEDING(S) |
| Cancellation No(s). 92058327 has/have been terminated. The applicant hereby requests removal of this application from
suspension for further action by the examining attorney. |
| COMMENT(S)/REMARK(S) |
|
The attached September 30, 2014, Stipulation for Dismissal with Prejudice was filed in Cancellation 92058327 on October 6, 2014.
|
| REMARKS FILE NAME(S) |
| ORIGINAL PDF FILE |
CAR_6617572169-153413676_._MNSLtdttabvue-92058327-CAN-9.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\765\141\76514182\xml5\RSI0002.JPG |
| |
\\TICRS\EXPORT16\IMAGEOUT16\765\141\76514182\xml5\RSI0003.JPG |
| |
\\TICRS\EXPORT16\IMAGEOUT16\765\141\76514182\xml5\RSI0004.JPG |
| ASSIGNMENT |
| The assignment involving serial number(s) 76514182 has now been recorded, at Reel No. 5375 Frame No. 0125. The
applicant hereby requests removal of this application from suspension for further action by the examining attorney. |
| COMMENT(S)/REMARK(S) |
| This application 76514182 was assigned to Applicant MNS, Ltd. dba ABC Stores on September
30, 2014, by assignment recorded at the United States Patent and Trademark Office at reel/frame no. 5375/0125.
Applicant’s name was updated on TSDR on or about October 10, 2014 |
| ADDITIONAL STATEMENTS SECTION |
| PRIOR REGISTRATION(S) |
The applicant claims ownership of U.S. Registration Number(s) 4301543. |
| MISCELLANEOUS STATEMENT |
Applicants predecessor-in-interest, the Certified Group, LLC, originally filed this application. In a May 29, 2013, Office Action, the
Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, alleging that ISLAND GIRL, when used on or in connection with clothing, namely, swimwear, pants, shorts,
skirts and shirts for women and girls is likely to be confused with U.S. Registration No. 4,301,543 for ISLAND EDGE GIRL for clothing, namely, t-shirts and shorts (the Blocking Registration)
owned by Applicant. In response to the Office Action, the Certified Group, LLC instituted cancellation proceeding 92058327, seeking to cancel the Blocking Registration, and requested suspension. The
Suspension Letter suspended examination of the Application in view of the cancellation proceeding. The Certified Group, LLC has now assigned this Application to Applicant, and Applicant and the
Certified Group, LLC have filed a stipulation to dismiss the cancellation proceeding with prejudice. Applicant is now the owner of both the Blocking Registration and this Application. In view of the
above, Applicant submits that this Application should be removed from suspension and approved for publication, and an early action to that effect is earnestly solicited. |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Martin E. Hsia/ |
| SIGNATORY'S NAME |
Martin E. Hsia, 32,471 |
| SIGNATORY'S POSITION |
Attorney of record, Hawaii bar member |
| SIGNATORY'S PHONE NUMBER |
(808) 544-3835 |
| DATE SIGNED |
10/20/2014 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Oct 20 15:47:43 EDT 2014 |
| TEAS STAMP |
USPTO/RSI-XX.XXX.XX.XXX-2
0141020154743291452-76514
182-500e898e9f55f67958673
c7e73356c29420839f38f162f
a9f174d9abc63243ff5bb-N/A
-N/A-20141020153413676057 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Suspension Inquiry or Letter of Suspension
To the Commissioner for Trademarks:
Application serial no.
76514182 ISLAND GIRL(Standard Characters, see http://uspto.report/TM/76514182/mark.png) has been amended as follows:
CANCELLATION PROCEEDING(S)
Cancellation No(s). 92058327 has/have been terminated. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.
Comment(s)/Remark(s):
The attached September 30, 2014, Stipulation for Dismissal with Prejudice was filed in Cancellation 92058327 on October 6, 2014.
Original PDF file:
CAR_6617572169-153413676_._MNSLtdttabvue-92058327-CAN-9.pdf
Converted PDF file(s) (3 pages)
Cancellation File1
Cancellation File2
Cancellation File3
ASSIGNMENT
The assignment involving serial number(s) 76514182 has now been recorded, at Reel No. 5375 Frame No. 0125. The applicant hereby requests removal of this application from suspension for further action
by the examining attorney.
Comment(s)/Remark(s):
This application 76514182 was assigned to Applicant MNS, Ltd. dba ABC Stores on September 30, 2014, by assignment recorded at the United States Patent and Trademark Office
at reel/frame no. 5375/0125. Applicant’s name was updated on TSDR on or about October 10, 2014
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 4301543.
Miscellaneous Statement
Applicants predecessor-in-interest, the Certified Group, LLC, originally filed this application. In a May 29, 2013, Office Action, the Trademark Examining Attorney refused registration under Section
2(d) of the Trademark Act, alleging that ISLAND GIRL, when used on or in connection with clothing, namely, swimwear, pants, shorts, skirts and shirts for women and girls is likely to be confused
with U.S. Registration No. 4,301,543 for ISLAND EDGE GIRL for clothing, namely, t-shirts and shorts (the Blocking Registration) owned by Applicant. In response to the Office Action, the
Certified Group, LLC instituted cancellation proceeding 92058327, seeking to cancel the Blocking Registration, and requested suspension. The Suspension Letter suspended examination of the Application
in view of the cancellation proceeding. The Certified Group, LLC has now assigned this Application to Applicant, and Applicant and the Certified Group, LLC have filed a stipulation to dismiss the
cancellation proceeding with prejudice. Applicant is now the owner of both the Blocking Registration and this Application. In view of the above, Applicant submits that this Application should be
removed from suspension and approved for publication, and an early action to that effect is earnestly solicited.
Response Suspension Inquiry Signature
Signature: /Martin E. Hsia/ Date: 10/20/2014
Signatory's Name: Martin E. Hsia, 32,471
Signatory's Position: Attorney of record, Hawaii bar member
Signatory's Phone Number: (808) 544-3835
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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant'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.
Serial Number: 76514182
Internet Transmission Date: Mon Oct 20 15:47:43 EDT 2014
TEAS Stamp: USPTO/RSI-XX.XXX.XX.XXX-2014102015474329
1452-76514182-500e898e9f55f67958673c7e73
356c29420839f38f162fa9f174d9abc63243ff5b
b-N/A-N/A-20141020153413676057
