Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79119469 IT TAKES TWO(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79119469) has been amended as follows:

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

The Examining Attorney has issued a refusal of class 014 and has indicated that serial number 85367088 is a potential bar to confusion.  Applicant deletes class 014. 

Serial number 85367088 has matured into registration number 4258556 for the mark IT TAKES TWO TO MANGO in connection with "indoor tanning products, namely, non-medicated skin tan darkening lotions and skin moisturizers," in class 003.  Applicant's mark is IT TAKES TWO (stylized), but amends its class 003 goods as follows: " Adult sexual aids in the nature of Aphrodisiac massage oil and Aphrodisiac incense," in class 003.

The Trademark Trial and Appeal Board has held that the fact that a mark may exist in the same general field is insufficient to find a likelihood of confusion. In re Shipp, 4 USPQ2d 1174 (TTAB 1987) (PURITAN for laundry and dry cleaning services and PURITAN for dry cleaning machine filters and parts therefor "while related in the sense that they are all in the laundry and dry cleaning industry, are not so related that they would come to the attention of the same kinds of purchasers and we believe that confusion as to source or sponsorship, while possible, is not likely"); Reynolds & Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1987)("there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computer").

Applicant's goods in class 003 flow in a distinctly different channel of trade as the goods of class 003 of the cited registration because applicant's goods are adult pleasure products to arouse sexual activity  while registrant's class 003 goods are indoor tanning products.  The products have different purposes and therefore target different prospective consumers.  Since the goods target distinctly different channels of trade in the wider category of cosmetics, the channels of trade are not related.  Registration no. 4258556 should therefore not serve as a bar to registration.






CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 014 for Jewelry, precious stones, timepieces and chronometric instruments, precious metals and their alloys, coins, works of art of precious metal, jewelry cases, boxes of precious metal, watch cases, bands, chains, springs or glasses, novelty key rings, statues or figurines (statuettes) of precious metal, cases or presentation cases for timepieces, medals

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Deodorants, soap, perfumes, essential oils, cosmetics, hair lotions, dentifrices, depilatory preparations, make-up removing preparations, lipsticks, beauty masks, shaving preparations, leather preservatives (polishes), creams for leather, hygiene preparations
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: Deodorants, soap, perfumes, essential oils, cosmetics, hair lotions, dentifrices, depilatory preparations, make-up removing preparations, lipsticks, beauty masks, shaving preparations, leather preservatives (polishes), creams for leather, hygiene preparations; Adult sexual aids in the nature of Aphrodisiac massage oil and Aphrodisiac incenseClass 003 for Adult sexual aids in the nature of Aphrodisiac massage oil and Aphrodisiac incense

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 010 for Massage apparatus, aesthetic massage apparatus, artificial limbs, surgical implants (artificial materials), sex toys and accessories for intimate stimulation, condoms
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: Massage apparatus, aesthetic massage apparatus, artificial limbs, surgical implants (artificial materials), sex toys and accessories for intimate stimulation, condoms; Adult sexual stimulation aids, namely, Vibrating artificial penises, Vibrating ring; condomsClass 010 for Adult sexual stimulation aids, namely, Vibrating artificial penises, Vibrating ring; condoms

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: BEBICACI Deyvis legally organized under the laws of XP, having an address of
      4 avenue des Citronniers
      ,
      Monaco

Proposed: BEBICACI Deyvis, a citizen of Monaco, having an address of
      4 avenue des Citronniers
      MC-98000 MONACO,
      Monaco

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
John Alumit of ALUMIT IP, having an address of
135 South Jackson Street, Suite 200 Glendale, California 91205
United States
john@alumitip.com
8182444861


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
BEBICACI DEYVIS
4 AVENUE DES CITRONNIERS
MC-98000 MONACO
MC

Proposed:
John Alumit of ALUMIT IP, having an address of
135 South Jackson Street, Suite 200 Glendale, California 91205
United States
john@alumitip.com
8182444861



SIGNATURE(S)
Response Signature
Signature: /john alumit/     Date: 06/11/2013
Signatory's Name: John Alumit
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 818-244-4861

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:    John Alumit
   ALUMIT IP
   135 South Jackson Street, Suite 200
   Glendale, California 91205
        
Serial Number: 79119469
Internet Transmission Date: Tue Jun 11 03:13:31 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201306110313311765
21-79119469-50018e2b6dde9d46181fb8698901
49c3693acf189f78c5366d8dd37fa5b61df429-N
/A-N/A-20130611025655213470