PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER79035638
LAW OFFICE ASSIGNEDLAW OFFICE 114
MARK SECTION (no change)
OWNER SECTION (current)
NAME FABERGE SERVICES LIMITED
STREET 17 St George Street London W1S 1FJ
COUNTRY United Kingdom
OWNER SECTION (proposed)
NAME FABERGE SERVICES LIMITED
STREET 17 St George Street London W1S 1FJ
COUNTRY United Kingdom
LEGAL ENTITY SECTION (current)
TYPE Private limited company
LEGAL ENTITY SECTION (proposed)
TYPE limited liability company
STATE/COUNTRY WHERE LEGALLY ORGANIZED United Kingdom
ARGUMENT(S)

The Examining Attorney's December 31, 2008 Office Action: (1) requested various changes to the descriptions of goods and services in Classes 20, 24, 28, and 41; (2) requested cetain entity information for the Applicant; and (3) raised a Section 2(d) rejection.

Applicant has made a number of changes to the descriptions of goods and services in Classes 20, 24, 28, and 41, and Applicant believes it has addressed every such issued raised by the Examinig Attorney.  The only term that the Applicant did not amend is "health club services," because Applicant believes this term is acceptable according to the Goods and Services Manual.

Applicant has also supplied the requested entity information.

Finally, as to the Section 2(d) rejection, Applicant respectfully submits that there is no likelihood of confusion with the prior registered marks cited by the Examining Attorney because the owners of the cited registrations and Applicant are related companies.  Thus, there is a unity of control over the FABERGE mark.

Applicant believes that the application is now in condition for publication.  Favorable action is requested.
GOODS AND/OR SERVICES SECTION (004)(no change)
GOODS AND/OR SERVICES SECTION (020)(current)
INTERNATIONAL CLASS020
DESCRIPTION
Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; coffins; coatstands; containers (not of metal) for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds
GOODS AND/OR SERVICES SECTION (020)(proposed)
INTERNATIONAL CLASS020
TRACKED TEXT DESCRIPTION
Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; coffins; wooden coffins; coatstands; containers (not of metal) for storing watches, jewellery, gemstones; wooden containers for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds
FINAL DESCRIPTION
Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; wooden coffins; coatstands; wooden containers for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds
GOODS AND/OR SERVICES SECTION (024)(current)
INTERNATIONAL CLASS024
DESCRIPTION
Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and bed covers, table covers, cushion covers, covers for furniture; curtains, towels, handkerchiefs, tapestry
GOODS AND/OR SERVICES SECTION (024)(proposed)
INTERNATIONAL CLASS024
TRACKED TEXT DESCRIPTION
Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and bed covers, table covers, cushion covers, covers for furniture; textile goods, namely bed linen and fitted bed covers, fitted table covers, cushion covers, fitted covers for furniture; curtains, towels, handkerchiefs, tapestry
FINAL DESCRIPTION
Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and fitted bed covers, fitted table covers, cushion covers, fitted covers for furniture; curtains, towels, handkerchiefs, tapestry
GOODS AND/OR SERVICES SECTION (028)(current)
INTERNATIONAL CLASS028
DESCRIPTION
Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; rackets; fencing guards and foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; teddy bears; model vehicles
GOODS AND/OR SERVICES SECTION (028)(proposed)
INTERNATIONAL CLASS028
TRACKED TEXT DESCRIPTION
Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; rackets; tennis rackets; fencing guards and foils; fencing guards, namely, arm guards, face guards, and leg guards; fencing foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; model vehicles; teddy bears; toy model vehicles
FINAL DESCRIPTION
Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; tennis rackets; fencing guards, namely, arm guards, face guards, and leg guards; fencing foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; teddy bears; toy model vehicles
GOODS AND/OR SERVICES SECTION (032)(no change)
GOODS AND/OR SERVICES SECTION (035)(no change)
GOODS AND/OR SERVICES SECTION (041)(current)
INTERNATIONAL CLASS041
DESCRIPTION
Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances; providing museum facilities; night clubs; party planning;ticket agency services; zoological and botanical gardens
GOODS AND/OR SERVICES SECTION (041)(proposed)
INTERNATIONAL CLASS041
TRACKED TEXT DESCRIPTION
Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions; arranging and conducting conferences and exhibitions for others; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances; presentation of live performances, namely, circuses, live bands, dance, ballet, opera, and theatrical performances; providing museum facilities; operating museum facilities; night clubs; party planning; ticket agency services; zoological and botanical gardens
FINAL DESCRIPTION
Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions for others; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances, namely, circuses, live bands, dance, ballet, opera, and theatrical performances; operating museum facilities; night clubs; party planning; ticket agency services; zoological and botanical gardens
GOODS AND/OR SERVICES SECTION (043)(no change)
GOODS AND/OR SERVICES SECTION (044)(no change)
CORRESPONDENCE SECTION
ORIGINAL ADDRESS Clifford Chance LLP
10 Upper Bank Street
London E14 5JJ, United Kingdom
NEW CORRESPONDENCE SECTION
NAME Steven T. Shelton
FIRM NAME Clifford Chance US LLP
STREET 31 West 52nd Street
CITY New York
STATE New York
ZIP/POSTAL CODE 10019-6131
COUNTRY United States
PHONE 212-878-8000
FAX 212-878-8375
EMAIL trademark.group@cliffordchance.com
AUTHORIZED EMAIL COMMUNICATION Yes
SIGNATURE SECTION
DECLARATION SIGNATURE /Steven T. Shelton/
SIGNATORY'S NAME Steven T. Shelton
SIGNATORY'S POSITION Attorney for Applicant
DATE SIGNED 06/30/2009
RESPONSE SIGNATURE /Steven T. Shelton/
SIGNATORY'S NAME Steven T. Shelton
SIGNATORY'S POSITION Attorney for Applicant
DATE SIGNED 06/30/2009
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Jun 30 18:06:47 EDT 2009
TEAS STAMP USPTO/ROA-XXX.XX.XXX.XXX-
20090630180647436478-7903
5638-43097782e7e550df9af9
6cc57727c07c2e-N/A-N/A-20
090630175549427802


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. 79035638 has been amended as follows:

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

The Examining Attorney's December 31, 2008 Office Action: (1) requested various changes to the descriptions of goods and services in Classes 20, 24, 28, and 41; (2) requested cetain entity information for the Applicant; and (3) raised a Section 2(d) rejection.

Applicant has made a number of changes to the descriptions of goods and services in Classes 20, 24, 28, and 41, and Applicant believes it has addressed every such issued raised by the Examinig Attorney.  The only term that the Applicant did not amend is "health club services," because Applicant believes this term is acceptable according to the Goods and Services Manual.

Applicant has also supplied the requested entity information.

Finally, as to the Section 2(d) rejection, Applicant respectfully submits that there is no likelihood of confusion with the prior registered marks cited by the Examining Attorney because the owners of the cited registrations and Applicant are related companies.  Thus, there is a unity of control over the FABERGE mark.

Applicant believes that the application is now in condition for publication.  Favorable action is requested.



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; coffins; coatstands; containers (not of metal) for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; coffins; wooden coffins; coatstands; containers (not of metal) for storing watches, jewellery, gemstones; wooden containers for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds

Class 020 for Furniture; mirrors; picture frames; bamboo curtains; beds, mattresses; wooden coffins; coatstands; wooden containers for storing watches, jewellery, gemstones; cushions; figurines, statuettes and works of art of wood, wax, plaster, bone, ivory, shell, amber, mother of pearl, meerschaum; indoor window blinds

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and bed covers, table covers, cushion covers, covers for furniture; curtains, towels, handkerchiefs, tapestry
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and bed covers, table covers, cushion covers, covers for furniture; textile goods, namely bed linen and fitted bed covers, fitted table covers, cushion covers, fitted covers for furniture; curtains, towels, handkerchiefs, tapestry

Class 024 for Textiles namely cotton fabric, calico, silk; textile goods, namely bed linen and fitted bed covers, fitted table covers, cushion covers, fitted covers for furniture; curtains, towels, handkerchiefs, tapestry

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; rackets; fencing guards and foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; teddy bears; model vehicles
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; rackets; tennis rackets; fencing guards and foils; fencing guards, namely, arm guards, face guards, and leg guards; fencing foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; model vehicles; teddy bears; toy model vehicles

Class 028 for Christmas tree decorations other than confectionary or illumination articles; board games; playing cards; ride on toys; body building apparatus; golf clubs and bags; hang gliders; sail boards, surf boards; billiard cues and tables; tennis rackets; fencing guards, namely, arm guards, face guards, and leg guards; fencing foils; skis and ski bags; dolls, dolls' houses and dolls' clothes; teddy bears; toy model vehicles

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances; providing museum facilities; night clubs; party planning;ticket agency services; zoological and botanical gardens
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions; arranging and conducting conferences and exhibitions for others; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances; presentation of live performances, namely, circuses, live bands, dance, ballet, opera, and theatrical performances; providing museum facilities; operating museum facilities; night clubs; party planning; ticket agency services; zoological and botanical gardens

Class 041 for Arranging of beauty contests; providing casino facilities; game services provided on-line from a computer network; arranging and conducting conferences and exhibitions for others; production of radio and television programs and film; providing golf facilities; health club services; providing recreation facilities; presentation of live performances, namely, circuses, live bands, dance, ballet, opera, and theatrical performances; operating museum facilities; night clubs; party planning; ticket agency services; zoological and botanical gardens

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: FABERGE SERVICES LIMITED a(n) Private limited company, having an address of
      17 St George Street London W1S 1FJ
      ,
      United Kingdom

Proposed: FABERGE SERVICES LIMITED, a limited liability company legally organized under the laws of United Kingdom, having an address of
      17 St George Street London W1S 1FJ
      United Kingdom

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Clifford Chance LLP
10 Upper Bank Street
London E14 5JJ, United Kingdom

Proposed:
Steven T. Shelton of Clifford Chance US LLP, having an address of
31 West 52nd Street New York, New York 10019-6131
United States
trademark.group@cliffordchance.com
212-878-8000
212-878-8375



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: /Steven T. Shelton/      Date: 06/30/2009
Signatory's Name: Steven T. Shelton
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /Steven T. Shelton/     Date: 06/30/2009
Signatory's Name: Steven T. Shelton
Signatory's Position: Attorney for Applicant

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.

Mailing Address:    Steven T. Shelton
   Clifford Chance US LLP
   31 West 52nd Street
   New York, New York 10019-6131
        
Serial Number: 79035638
Internet Transmission Date: Tue Jun 30 18:06:47 EDT 2009
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-200906301806474
36478-79035638-43097782e7e550df9af96cc57
727c07c2e-N/A-N/A-20090630175549427802