Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78534814 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The Examining Attorney has refused registration on the basis that there is a likelihood of confusion between Applicant’s mark AIRLIFE and the mark in U.S. Registration No. 1190418, AIRLIFT, in regard to the deodorants claimed in Class 5.  The Examining Attorney has indicated that the objection relates only to deodorants in Class 5.  In conjunction with this response, Applicant has amended the identification of goods in Class 5 of its application to delete “deodorants, not for personal use”.  

Applicant respectfully submits that the marks are sufficiently different in appearance, sound and commercial connotation, and Applicant’s remaining goods in Class 5 are sufficiently unrelated to those of the cited registration, so that confusion between the marks is not likely and the refusal should be withdrawn. 

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 003 for Soaps, perfumery, essential oils, scented oils and fumigation preparations, preparations for body and beauty care, deodorants for personal use
Original Filing Basis: 44(d); and/or 44(e).
Proposed: Class 003 for Soaps for personal use and laundry use; all-purpose household cleaners; perfumery; essential oils for use in the manufacture of scented products; scented oils for air freshening; room fragrances; preparations for body and beauty care, namely, deodorants for personal use
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Germany application number 304 34 949 filed 06/18/2004]. 15 U.S.C.Section 1126(d), as amended.

Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Germany registration number 304 34 949 registered 07/16/2004 with a renewal date of __________ and an expiration date of 06/30/2014 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

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Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 004 for Candles
Original Filing Basis: 44(d); and/or 44(e).
Proposed: Class 004 for Candles
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Germany application number 304 39 949 filed 06/18/2004]. 15 U.S.C.Section 1126(d), as amended.

Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Germany registration number 304 39 949 registered 07/16/2004 with a renewal date of __________ and an expiration date of 06/30/2014 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 005 for Deodorants, not for personal use, disinfectants, insecticides, fumigating sticks, air purifying preparations, air freshening preparations
Original Filing Basis: 44(d); and/or 44(e).
Proposed: Class 005 for Disinfectants for household cleaning; insecticides, air fresheners
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Germany application number 304 39 949 filed 06/18/2004]. 15 U.S.C.Section 1126(d), as amended.

Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Germany registration number 304 39 949 registered 07/16/2004 with a renewal date of __________ and an expiration date of 06/30/2014 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Electric devices for attracting and killing insects
Original Filing Basis: 44(d); and/or 44(e).
Proposed: Class 009 for Electric devices for attracting and killing insects
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Germany application number 304 39 949 filed 06/18/2004]. 15 U.S.C.Section 1126(d), as amended.

Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Germany registration number 304 39 949 registered 07/16/2004 with a renewal date of __________ and an expiration date of 06/30/2014 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 011 for Air deodorizing devices, disinfectant apparatus, disinfectant dispensers for toilets
Original Filing Basis: 44(d); and/or 44(e).
Proposed: Class 011 for Dispensing units for room deodorants; air purifiers; dispensers for household disinfectants; dispensers for toilet disinfectants
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Germany application number 304 39 949 filed 06/18/2004]. 15 U.S.C.Section 1126(d), as amended.

Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Germany registration number 304 39 949 registered 07/16/2004 with a renewal date of __________ and an expiration date of 06/30/2014 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.


Procedural Matters/Informalities
Applicant proposes to amend the following:
Original: Henkel KGaA a(n) PARTNERSHIP LIMITED BY SHARES, having an address of Henkelstr. 67, Postfach 1100 Duesseldorf, DE 40191.
Proposed: Henkel KGaA, PARTNERSHIP LIMITED BY SHARES organized under the laws of Germany, comprising of The Examining Attorney has requested that Applicant indicate its entity type and citizenship. Applicant, Henkel KGaA, is a partnership limited by shares, organized and existing under the laws of the Federal Republic of Germany. Under German law, a KGaA, or Kommanditgesellschaft auf Aktien (which can be translated as a company, corporation, association, or partnership limited by shares), is a legal entity that survives even though partners may change. Consequently, pursuant to TMEP § 803.03(i), it is not necessary to list the names of its partners., having an address of Henkelstr. 67, Postfach 1100 Duesseldorf, Germany 40191.


Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature

Signature: /susan f. evans/     Date: 01/27/2006
Signatory's Name: Susan F. Evans
Signatory's Position: Contract Attorney
        
Serial Number: 78534814
Internet Transmission Date: Fri Jan 27 15:21:14 EST 2006
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20060127152114027
568-78534814-320c9852ef8d691b4b44343f495
c8f587d-N/A-N/A-20060127145043762211