PTO Form 2194 (Rev 9/2005) |
OMB No. 0651-0054 (Exp 09/30/2011) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 78691057 |
LAW OFFICE ASSIGNED | LAW OFFICE 116 |
PETITION | |
PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
RESPONSE TO OFFICE ACTION | |
MARK SECTION (no change) | |
ARGUMENT(S) | |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Applicant: The Ester C Company Examining Atty: Patrick W. Shanahan Serial No.: 78/691,057 Law Office: 116 Filed: August 11, 2005 Mark: ESTER Date: June 6, 2008
Via Internet Submission Commissioner for Trademarks Post Publication Amendments Petitions Office P.O. Box 1451 Alexandria, Virginia 22313-1451 Fax No. 571-270-9007
RESPONSE TO OFFICE ACTION Dear Madam: In response to the Office Action dated November 26, 2007, the Applicant respectfully requests that the above-named application be reconsidered in view of the arguments presented below. Remarks Applicant requests that the description of goods be amended to delete all of the goods in International Class 3, namely: Cosmetic preparations for body care, cosmetic preparations, namely, skin creams and non-mediated serum. In addition, Applicant submits that the subject mark, ESTER, is a member of the ESTER-C family of marks that are well-known, a household brand, and used world-wide for vitamin C, vitamins and dietary supplements. The ESTER-C marks have been in use in commerce since at least 1983. See, ESTER-C, reg. no. 1,354,735; ESTER-C, reg. no. 1,598,104; ESTER-C, reg. no. 1,742,066; ESTER-C BOOST, reg. no. 2,528,608; ESTER-C, reg. no. 2,977,776. The dominant portion of the ESTER-C marks is ESTER, which is identical is the subject mark of this application, and therefore in use in the market place without confusion, for many years. Under these circumstances, the ESTER mark has been in use with the ESTER-C goods for over 21 years before the date of first use for the cited mark, ESTERA (reg. no. 3,288,615). Applicant’s ESTER mark, therefore, may proceed to registration, without market confusion, and Applicant respectfully requests the same. The Commissioner is hereby authorized to apply any charges to the Applicant’s deposit account, No. 502153. Please contact the undersigned attorney should you have any questions.
Respectfully submitted,
Lee Grosskreuz Hechtel NBTY, Inc. Legal Dept. 2100 Smithtown Ave. Ronkonkoma, New York 11779 631.218.7335 lhechtel@nbty.com
|
|
GOODS AND/OR SERVICES SECTION (003)(class deleted) | |
INTERNATIONAL CLASS | 003 |
DESCRIPTION | |
Cosmetic preparations for body care; cosmetic preparations, namely, skin cream or serum | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (005)(no change) | |
PAYMENT SECTION | |
TOTAL AMOUNT | 100 |
TOTAL FEES DUE | 100 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /lgh/ |
SIGNATORY'S NAME | Lee Grosskreuz Hechtel |
SIGNATORY'S POSITION | attorney |
DATE SIGNED | 06/06/2008 |
RESPONSE SIGNATURE | /lgh/ |
SIGNATORY'S NAME | Lee Grosskreuz Hechtel |
SIGNATORY'S POSITION | attorney |
DATE SIGNED | 06/06/2008 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Fri Jun 06 15:41:43 EDT 2008 |
TEAS STAMP | USPTO/POA-XX.XX.XXX.X-200 80606154143464374-7869105 7-420c944e1e2144c61dec885 955159275431-DA-878-20080 606153205898700 |
PTO Form 2194 (Rev 9/2005) |
OMB No. 0651-0054 (Exp 09/30/2011) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: The Ester C Company Examining Atty: Patrick W. Shanahan
Serial No.: 78/691,057 Law Office: 116
Filed: August 11, 2005
Mark: ESTER Date: June 6, 2008
Via Internet Submission
Commissioner for Trademarks
Post Publication Amendments
Petitions Office
P.O. Box 1451
Alexandria, Virginia 22313-1451
Fax No. 571-270-9007
RESPONSE TO OFFICE ACTION
Dear Madam:
In response to the Office Action dated November 26, 2007, the Applicant respectfully requests that the above-named application be reconsidered in view of the arguments presented below.
Remarks
Applicant requests that the description of goods be amended to delete all of the goods in International Class 3, namely:
Cosmetic preparations for body care, cosmetic preparations, namely, skin creams and non-mediated serum.
In addition, Applicant submits that the subject mark, ESTER, is a member of the ESTER-C family of marks that are well-known, a household brand, and used world-wide for vitamin C, vitamins and dietary supplements. The ESTER-C marks have been in use in commerce since at least 1983. See, ESTER-C, reg. no. 1,354,735; ESTER-C, reg. no. 1,598,104; ESTER-C, reg. no. 1,742,066; ESTER-C BOOST, reg. no. 2,528,608; ESTER-C, reg. no. 2,977,776. The dominant portion of the ESTER-C marks is ESTER, which is identical is the subject mark of this application, and therefore in use in the market place without confusion, for many years. Under these circumstances, the ESTER mark has been in use with the ESTER-C goods for over 21 years before the date of first use for the cited mark, ESTERA (reg. no. 3,288,615). Applicant’s ESTER mark, therefore, may proceed to registration, without market confusion, and Applicant respectfully requests the same.
The Commissioner is hereby authorized to apply any charges to the Applicant’s deposit account, No. 502153. Please contact the undersigned attorney should you have any questions.
Respectfully submitted,
Lee Grosskreuz Hechtel
NBTY, Inc.
Legal Dept.
2100 Smithtown Ave.
Ronkonkoma, New York 11779
631.218.7335
lhechtel@nbty.com