Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77665306 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Office Action dated April 26, 2009, applicant hereby submits that AMOUAGE has no significance in the relevant trade, and no geographical significance; however, AMOUAGE, is an Arabic word which has an English translation of "waves."  Furthermore, in response to the Office Action, applicant has amended its description of goods and recitation of services, and has added a claim of ownership, as requested by the Examining Attorney.

In view of the above, applicant believes its application is now in condition for publication.  If questions remain, the Examining Attorney is invited to contact applicant's counsel, Richard T. Ruzich, by telephone at 312.499.6783 or by email at rtruzich@duanemorris.com.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 005 for home fragrances

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for optical apparatus and instruments; eyeglass cases; spectacles; sunglasses; cases for sunglasses and spectacles; field glasses; spectacle frames and lenses; eyeglass chains and cords; chains and cords for spectacles and glasses
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: optical apparatus and instruments; eyeglass cases; spectacles; sunglasses; cases for sunglasses and spectacles; field glasses; spectacle frames and lenses; eyeglass chains and cords; chains and cords for spectacles and glassesClass 009 for eyeglass cases; spectacles; sunglasses; cases for sunglasses and spectacles; field glasses; spectacle frames and lenses; eyeglass chains and cords; chains and cords for spectacles and glasses
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for precious metals and their alloys; jewelry; precious stones; watches; clocks; bracelets; brooches; candlesticks; cases and boxes of precious metals; earrings; costume jewelry; rings; key rings; goods made from precious metals; powder compacts of precious metal; tie pins; ornamental pins; watch cases and chains; wrist watches
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: precious metals and their alloys; jewelry; precious stones; watches; clocks; bracelets; brooches; candlesticks; earrings; cases and boxes of precious metals; costume jewelry; rings; key rings of precious metal; tie pins; key rings; ornamental pins; goods made from precious metals; watch cases and chains; powder compacts of precious metal; wrist watchesClass 014 for precious metals and their alloys; jewelry; precious stones; watches; clocks; bracelets; brooches; earrings; costume jewelry; rings; key rings of precious metal; tie pins; ornamental pins; watch cases and chains; wrist watches
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for leather and imitations of leather and goods made from these materials; trunks and travelling bags; bags; handbags; purses; pouches; belts; briefcases; leather boxes; umbrellas; vanity cases; suitcases
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: leather and imitations of leather and goods made from these materials; leather and imitations of leather and goods made from these materials, namely, trunks and travelling bags, bags, handbags, purses, pouches, briefcases, leather boxes, umbrellas, vanity cases sold empty, suitcases; trunks and travelling bags; bags; handbags; purses; pouches; leather shoulder belts; belts; briefcases; leather boxes; umbrellas; vanity cases sold empty; vanity cases; suitcasesClass 018 for leather and imitations of leather and goods made from these materials, namely, trunks and travelling bags, bags, handbags, purses, pouches, briefcases, leather boxes, umbrellas, vanity cases sold empty, suitcases; trunks and travelling bags; bags; handbags; purses; leather shoulder belts; briefcases; leather boxes; umbrellas; vanity cases sold empty; suitcases
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for retail services; retail services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases, mail order services and on-line retail services relating to all the aforesaid goods
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: retail services; retail store services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases, and mail order services and on-line retail store services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases; retail services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases, mail order services and on-line retail services relating to all the aforesaid goodsClass 035 for retail store services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases, and mail order services and on-line retail store services in the fields of perfumes, soaps, essential oils, cosmetics, hair care, fragrances, leather goods, sunglasses, home fragrances, candles, jewelry, bags, handbags, watches, suitcases
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant hereby adds the following class of goods/services to the application:
New: Class 003 (Original Class: 005 ) for room fragrances; powder compacts of precious metals
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

ADDITIONAL STATEMENTS
Claim of Prior Registration(s)
Applicant claims ownership of U.S. Registration Number(s) 1413894.

Significance of wording, letter(s), or numeral(s)
AMOUAGE appearing in the mark has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance.

Translation
The English translation of AMOUAGE in the mark is waves.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had 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 as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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. §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 application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; 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/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /RTR/      Date: 07/08/2009
Signatory's Name: Richard T. Ruzich
Signatory's Position: Attorney of record, Illinois state bar member

Response Signature
Signature: /RTR/     Date: 07/08/2009
Signatory's Name: Richard T. Ruzich
Signatory's Position: Attorney of record, Illinois state 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 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: 77665306
Internet Transmission Date: Wed Jul 08 20:02:13 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2009070820021376
6296-77665306-43077c19a163b5f17b05aa3f4d
10732973-N/A-N/A-20090708193423545959