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. 77926629 has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: DR. SCHOLL'S (Stylized and/or with Design)
The color(s) blue and purple is/are claimed as a feature of the mark.
The mark consists of the wording Dr. Scholl's in blue within a blue oval, the color blue as applied to the bottom, foot-shaped portion of the insole, the color purple as applied to the top portion of the insole with a hollow oval cut-out showing the blue, bottom portion of the insole and ridges or grooves comprising a portion of the purple portion of the insole. The matter shown in broken lines is not part of the mark and serves only to show the position of placement of the mark.

Proposed: DR. SCHOLL'S (Stylized and/or with Design, see mark)


The color(s) blue and purple is/are claimed as a feature of the mark.

The mark consists of the trade dress consisting of the blue and purple. the mark is light blue with a purpose potion super imposed over the lower portion of the mark and extending up the outer right side. The bottom center of this portion includes a cut-out which reveals a light blue oval shape. The wording "Dr. Scholl's" appears in the middle of the mark and is presented in a dark blue stylized font within a dark blue oval outline. The oval and word elements are superimposed over the light blue. The matter shown in broken lines is not part of the mark and serves only to show the position of placement of the mark.

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

In the Office Action, the Examiner refused registration of the proposed trade dress on the ground that it is functional and the configuration of the goods is non-distinctive.  Although Applicant respectfully disagrees that the claimed trade dress is functional and non-distinctive, it requests that the claimed protection of the mark be limited to the colors comprising the mark.  Applicant has also submitted a claim of acquired distinctiveness for the colors.  As such, Applicant respectfully requests that the objections to registration be reconsidered and that the application be approved for publication at the earliest possible date.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Insoles
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2006 and first used in commerce at least as early as 01/00/2006, and is now in use in such commerce.

Proposed: Class 025 for Insoles
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2006 and first used in commerce at least as early as 01/00/2006, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 025. The specimen(s) submitted consists of Photograph of the goods- this is a photograph of the same goods submitted previously.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Section 2(f), based on Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 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. 2.44. 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 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. Section 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: /S. Roxanne Edwards/      Date: 03/18/2011
Signatory's Name: S. Roxanne Edwards
Signatory's Position: Attorney

Response Signature
Signature: /S. Roxanne Edwards/     Date: 03/18/2011
Signatory's Name: S. Roxanne Edwards
Signatory's Position: Attorney

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: 77926629
Internet Transmission Date: Fri Mar 18 17:25:52 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2011031817255238229
4-77926629-4808de7d0fcd7782667e66a82dd3f
feaf31-N/A-N/A-20110318171847214035