Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79205650 RAPHA(Standard Characters, see http://uspto.report/TM/79205650/mark.png) has been amended as follows:

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

Applicant respectfully submits that in light of the amendments to the application submitted in connection with this response, and the overall differences between the respective marks, there is no likelihood of confusion between applicant's RAPHA mark and Reg. No. 4459892 for the mark RAPHA INTERNATIONAL COSMETICS COLOR ME EARTH.  Therefore, the Section 2(d) refusal should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Aftershave; balms (non-medicated -); skin lotion; hair wax; ointments for cosmetic use; toiletries; animal grooming preparations; essential oils and aromatic extracts; abraders; cleaning and fragrancing preparations; tailors' and cobblers' wax
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: Aftershave; balms (non-medicated -); non-medicated body balms; skin lotion; hair wax; ointments for cosmetic use; general purpose non-medicated ointments for cosmetic use; toiletries; non-medicated toiletry preparations; animal grooming preparations; essential oils and aromatic oil extracts; essential oils and aromatic extracts; cleaning and fragrancing preparations, namely, all-purpose cleaning preparations, fragrances for personal use and room fragrances; abraders; tailors' and cobblers' wax; cleaning and fragrancing preparations; tailors’ and cobblers’ waxClass 003 for Aftershave; non-medicated body balms; skin lotion; hair wax; general purpose non-medicated ointments for cosmetic use; non-medicated toiletry preparations; essential oils and aromatic oil extracts; cleaning and fragrancing preparations, namely, all-purpose cleaning preparations, fragrances for personal use and room fragrances; tailors' and cobblers' wax

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 009 for Sunglasses; protective eyewear; cyclists' glasses; shoes (protective -); visors protective; protective headgear; protective clothing body armour; DVDs; downloadable publications; downloadable music files; downloadable image files; recorded content; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; and parts and fittings of all the aforesaid goods, included in the class
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: Sunglasses; protective eyewear; cyclists' glasses; shoes (protective -); protective industrial shoes; visors protective; protective helmet visors; protective headgear; protective headgear, namely, protective helmets and sports helmets; protective clothing body armour; protective clothing, namely, body armor; DVDs; DVDs in the field of bicycling, fashion and travel; downloadable publications; downloadable publications in the nature of books, magazines and newsletters in the field of bicycling, fashion and travel; downloadable music files; downloadable image files; downloadable image files in the field of bicycling, fashion and travel; recorded content; recorded content in the nature of DVDs, CDs and downloadable multimedia files in the field of bicycling, fashion and travel; information technology and audiovisual equipment; information technology and audio-visual equipment, namely, computers, data-processing equipment and audio headphones; magnets, magnetizers and demagnetizers; safety, security, protection and signalling devices, namely, safety helmets, security alarm controllers and digital signal processors; apparatus, instruments and cables for electricity; navigation, guidance, tracking, targeting and map making devices, namely, electric navigational instruments, GPS tracking devices and wearable activity trackers; optical devices, enhancers and correctors; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for measuring length, instruments for measuring speed and instruments for measuring biological data; safety, security, protection and signalling devices; educational apparatus and simulators, namely, electronic sports training simulators and sports training eyeglasses; diving equipment; replacement parts and fittings of all the aforesaid goods; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; and parts and fittings of all the aforesaid goods, included in the classClass 009 for Sunglasses; protective eyewear; cyclists' glasses; protective industrial shoes; protective helmet visors; protective headgear, namely, protective helmets and sports helmets; protective clothing, namely, body armor; DVDs in the field of bicycling, fashion and travel; downloadable publications in the nature of books, magazines and newsletters in the field of bicycling, fashion and travel; downloadable music files; downloadable image files in the field of bicycling, fashion and travel; recorded content in the nature of DVDs, CDs and downloadable multimedia files in the field of bicycling, fashion and travel; information technology and audio-visual equipment, namely, computers, data-processing equipment and audio headphones; safety, security, protection and signalling devices, namely, safety helmets, security alarm controllers and digital signal processors; navigation, guidance, tracking, targeting and map making devices, namely, electric navigational instruments, GPS tracking devices and wearable activity trackers; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for measuring length, instruments for measuring speed and instruments for measuring biological data; educational apparatus and simulators, namely, electronic sports training simulators and sports training eyeglasses; replacement parts and fittings of all the aforesaid goods

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 016 for Books; magazines; calendars; posters; works of art and figurines of paper and cardboard, and architects' models; decoration and art materials and media; filtering materials of paper; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; stationery and educational supplies; adhesives for stationery or household purposes; money holders; disposable paper products; printed matter; paper and cardboard; and parts and fittings of all the aforesaid goods, included in the class
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: Books; Books in the field of bicycling, fashion and travel; magazines; magazines in the field of bicycling, fashion and travel; calendars; posters; works of art and figurines of paper and cardboard, and architects’ models; works of art and figurines of paper and cardboard, and architects' models; decoration and art materials and media; stationery and educational supplies, namely, paper, pencils and pens; filtering materials of paper; adhesives for stationery or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; printed matter, namely, books, magazines and newsletters in the field of bicycling, fashion and travel; stationery and educational supplies; paper and cardboard; replacement parts and fittings of all the aforesaid goods; money holders; disposable paper products; printed matter; and parts and fittings of all the aforesaid goods, included in the classClass 016 for Books in the field of bicycling, fashion and travel; magazines in the field of bicycling, fashion and travel; calendars; posters; works of art and figurines of paper and cardboard, and architects' models; stationery and educational supplies, namely, paper, pencils and pens; adhesives for stationery or household purposes; printed matter, namely, books, magazines and newsletters in the field of bicycling, fashion and travel; paper and cardboard; replacement parts and fittings of all the aforesaid goods

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 039 for Arranging travel tours; organization of travel tours; organization of holidays for travel; booking of seats for travel; rental of vehicle roof racks; sightseeing tourism; travel reservation; vehicle rental; dispatch of goods; gift wrapping; guide services (travel -); transport; packaging and storage of goods; parking and vehicle storage, mooring; rental, hire and leasing of vehicles and storage space; and advice, consultancy and information for the aforesaid, included in the class
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 travel tours; Arranging transport for travel tours; organization of travel tours; organization of transport for travel tours; organization of holidays for travel; organization of transport for holidays for travel; booking of seats for travel; rental of vehicle roof racks; sightseeing tourism; providing transport for sightseeing tours; travel reservation; travel ticket reservation service; vehicle rental; dispatch of goods; shipping of goods; gift wrapping; guide services (travel -); travel guide services; transport; transport, namely, bicycle transport, railway transport, car transport and bus transport; packaging and storage of goods; parking and vehicle storage, mooring; vehicle parking and vehicle storage; rental, hire and leasing of vehicles and storage space; providing vessel mooring facilities; and advice, consultancy and information for the aforesaid, included in the class; rental, hire and leasing of vehicles and vehicle storage space; advice, consultancy and information in the fields of transport, travel, rental and storage of vehiclesClass 039 for Arranging transport for travel tours; organization of transport for travel tours; organization of transport for holidays for travel; booking of seats for travel; rental of vehicle roof racks; providing transport for sightseeing tours; travel ticket reservation service; vehicle rental; shipping of goods; gift wrapping; travel guide services; transport, namely, bicycle transport, railway transport, car transport and bus transport; packaging and storage of goods; vehicle parking and vehicle storage; providing vessel mooring facilities; rental, hire and leasing of vehicles and vehicle storage space; advice, consultancy and information in the fields of transport, travel, rental and storage of 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 Organization of bicycle races; organizing sporting events; organisation of parties; timing of sports events; provision of recreational events; tv entertainment services; production of tv shows; electronic games provided by means of the internet; entertainment provided via the internet; video production services; videotape production; production and distribution of films and videos; production and distribution of radio and television programmes; providing on-line electronic publications; publishing and reporting; education, entertainment and sports; translation and interpretation; rental, hire and leasing of audio visual equipment, sporting equipment and sporting facilities; and advice, consultancy and information for the aforesaid, included in the class
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: Organization of bicycle races; organizing sporting events; organizing sporting events, namely, bicycling events; organisation of parties; organisation of parties, namely, party planning; timing of sports events; provision of recreational events; provision of recreational events, namely, bicycling events; tv entertainment services; television entertainment services, namely, entertainment services in the nature of creation, development, and production of television programming; production of tv shows; production of television shows; electronic games provided by means of the internet; electronic game services provided by means of the internet; entertainment provided via the internet; entertainment provided via the internet, namely, providing online electronic games; video production services; videotape production; production and distribution of films and videos; production and distribution of radio and television programmes; providing on-line electronic publications; providing a website featuring non-downloadable electronic publications in the nature of books, magazines and newsletters in the field of bicycling, fashion and travel; publishing and reporting; publishing of magazines, newspapers, books; education, entertainment and sports; news reporter services; translation and interpretation; education, entertainment and sports, namely, sports training, organizing exhibitions for educational, entertainment and sporting purposes; translation and language interpretation; and advice, consultancy and information for the aforesaid, included in the class; rental, hire and leasing of audio visual equipment, sporting equipment and sporting facilities; advice, consultancy and information in the fields of entertainment, education, sports and publishingClass 041 for Organization of bicycle races; organizing sporting events, namely, bicycling events; organisation of parties, namely, party planning; timing of sports events; provision of recreational events, namely, bicycling events; television entertainment services, namely, entertainment services in the nature of creation, development, and production of television programming; production of television shows; electronic game services provided by means of the internet; entertainment provided via the internet, namely, providing online electronic games; video production services; videotape production; production and distribution of films and videos; production and distribution of radio and television programmes; providing a website featuring non-downloadable electronic publications in the nature of books, magazines and newsletters in the field of bicycling, fashion and travel; publishing of magazines, newspapers, books; news reporter services; education, entertainment and sports, namely, sports training, organizing exhibitions for educational, entertainment and sporting purposes; translation and language interpretation; rental, hire and leasing of audio visual equipment, sporting equipment and sporting facilities; advice, consultancy and information in the fields of entertainment, education, sports and publishing

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 043 for Bar services; restaurant services; cafés; coffee shops; canteens; food and drink catering; snack-bars; mobile catering services; accommodation services; provision of conference, exhibition, temporary office and meeting facilities; temporary accommodation; animal boarding; rental of furniture, linens and table settings; provision of food and drink; rental, hire and leasing of temporary accommodation, chairs, tables, table linen, glassware and bar equipment; and advice, consultancy and information for the aforesaid, included in the class
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: Bar services; restaurant services; cafés; coffee shops; canteens; canteen services; food and drink catering; snack-bars; mobile catering services; accommodation services; accommodation services, namely, hotel and motel services; provision of conference, exhibition, temporary office and meeting facilities; temporary accommodation; providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; provision of food and drink; rental, hire and leasing of temporary accommodation, chairs, tables, table linen, glassware and bar equipment; and advice, consultancy and information for the aforesaid, included in the class; advice, consultancy and information in the fields of bar and restaurant services, hotels and providing temporary accommodationsClass 043 for Bar services; restaurant services; cafés; coffee shops; canteen services; food and drink catering; snack-bars; mobile catering services; accommodation services, namely, hotel and motel services; provision of conference, exhibition, temporary office and meeting facilities; providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; provision of food and drink; rental, hire and leasing of temporary accommodation, chairs, tables, table linen, glassware and bar equipment; advice, consultancy and information in the fields of bar and restaurant services, hotels and providing temporary accommodations

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.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Robert J. English of Cowan, Liebowitz & Latman, P.C., having an address of
114 West 47th Street New York, New York 10036
United States
trademark@cll.com
212-790-9200


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Couchmans LLP
20-22 Bedford Row
London WC1R 4EB
GB

Proposed:
Robert J. English of Cowan, Liebowitz & Latman, P.C., having an address of
114 West 47th Street New York, New York 10036
United States
trademark@cll.com;rje@cll.com; las@cll.com
212-790-9200



ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
RAPHA appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Robert J. English/     Date: 11/10/2017
Signatory's Name: Robert J. English
Signatory's Position: attorney of record, NY bar member

Signatory's Phone Number: 212-790-9200

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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:    Robert J. English
   Cowan, Liebowitz & Latman, P.C.
   114 West 47th Street
   New York, New York 10036
        
Serial Number: 79205650
Internet Transmission Date: Fri Nov 10 16:39:53 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2017111016395327
5068-79205650-510a37d74fd1f6d9d1df7a4742
9c7edd51453c7e6613c2c3f5beaf23ef5a34cb7-
N/A-N/A-20171110155355135187