Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79288554 ONE PIECE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7928855 4/large) has been amended as follows:

EVIDENCE
Evidence has been attached: In the Office Action, the Examining Attorney stated that Applicant's mark may be confused with teh prior pending application for the mark ONE PIECE (Serial No. 88/472,395). Appliacnt advises the Examining Attorney that the instant application (and underlying International registrtaion) was assigned to the owner of Serial No. 88/472,395. Therefore, the prior-pending application potential rejection is moot, and Applicant requests withdrawal of the same.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, laundry preparations; make-up preparations
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: Bleaching preparations and other substances for laundry use; Bleaching preparations, fabric softener, laundry detergent, starch for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, laundry preparations; dentifrices, make-up preparations; make-up preparationsClass 003 for Bleaching preparations, fabric softener, laundry detergent, starch for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, make-up preparations

Webpage URL: None Provided
Webpage Date of Access: None Provided


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:

Current:
Class 021 for Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); watering cans; busts and figurines of porcelain, terra cotta or glass; china ornaments; insulation bottles; lunch boxes; candy boxes not of precious metal; candlesticks not of precious metal; eggs cups not of precious metal; toothbrushes; soap dispensers, toilet cases; toilet utensils; fitted picnic baskets; dustbins; drinking vessels; drinking flasks for travellers; cups of paper or plastics; plates of paper or plastics; mugs; napkin rings not of precious metal; isothermic bags; tableware not of precious metal
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: Household or kitchen utensils and containers (not of precious metal or coated therewith); Household and kitchen utensils and containers, namely, frying pans, cooking pots, kettles, non-electric, drinking flasks, chopsticks, trays for household purposes, serving trays, containers for household or kitchen use; combs and sponges; combs; brushes (except paint brushes); cleaning sponges; make-up brushes; watering cans; busts and figurines of porcelain, terra cotta or glass; insulation bottles; china ornaments; insulation bottles being vacuum bottles; lunch boxes; candy boxes not of precious metal; candlesticks not of precious metal; eggs cups not of precious metal; soap dispensers, toilet cases; toothbrushes; toilet utensils; soap dispensers; fitted vanity cases; fitted picnic baskets; dustbins; drinking vessels; drinking flasks for travellers; cups of paper or plastics; plates of paper or plastics; mugs; isothermic bags; napkin rings not of precious metal; tableware not of precious metal; isothermic bags in the nature of thermal insulated bagsClass 021 for Household and kitchen utensils and containers, namely, frying pans, cooking pots, kettles, non-electric, drinking flasks, chopsticks, trays for household purposes, serving trays, containers for household or kitchen use; combs; cleaning sponges; make-up brushes; watering cans; busts and figurines of porcelain, terra cotta or glass; china ornaments; insulation bottles being vacuum bottles; lunch boxes; candy boxes not of precious metal; candlesticks not of precious metal; eggs cups not of precious metal; toothbrushes; soap dispensers; fitted vanity cases; fitted picnic baskets; dustbins; drinking vessels; drinking flasks for travellers; cups of paper or plastics; plates of paper or plastics; mugs; napkin rings not of precious metal; isothermic bags in the nature of thermal insulated bags

Webpage URL: None Provided
Webpage Date of Access: None Provided


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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: KABUSHIKI KAISHA SHUEISHA trading as SHUEISHA INC. a(n) Japanese legally organized under the laws of Japan
Proposed: KABUSHIKI KAISHA SHUEISHA trading as SHUEISHA INC., kabushiki kaisha (k.k.) legally organized under the laws of Japan
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the words "ONE PIECE" between two horizontal lines, with a skull wearing a hat and crossbones overlapping the letter "O", a standing human figure in the place of the letter "I", and part of an anchor as the letter "E", with a rope in the mouth of the skull, wrapped around the lower horizontal line, being tied to the anchor/letter "E" at the end.

The owner's/holder's proposed attorney information: Keith A. Weltsch. Keith A. Weltsch of SCULLY, SCOTT, MURPHY & PRESSER, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Suite 300
      400 GARDEN CITY PLAZA, SUITE 300
      GARDEN CITY, New York 11530
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 2450/1021.
      The phone number is 516-742-4343.
      The fax number is 516-742-4366.
      The email address is intprop@ssmp.com

Keith A. Weltsch submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      SANTARELLI
Correspondence Information (proposed):
      Keith A. Weltsch
      PRIMARY EMAIL FOR CORRESPONDENCE: intprop@ssmp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kweltsch@ssmp.com; hmanthey@ssmp.com; mlpaitan@ssmp.com; tmdocketing@ssmp.com

The docket/reference number is 2450/1021.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /KAW/     Date: 02/24/2021
Signatory's Name: Keith A. Weltsch
Signatory's Position: Attorney of record, NY Bar Member

Signatory's Phone Number: 516 742 4343 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    SANTARELLI
   
   
   49 avenue des Champs Elysées
   F-75008 Paris,
Mailing Address:    Keith A. Weltsch
   SCULLY, SCOTT, MURPHY & PRESSER, P.C.
   Suite 300
   400 GARDEN CITY PLAZA, SUITE 300
   GARDEN CITY, New York 11530
        
Serial Number: 79288554
Internet Transmission Date: Wed Feb 24 23:12:42 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20210224231242891
141-79288554-7709e5e35d68f807bf1fad5534e
1e49b1e5c4a2653d9626fc4f8cea0688796472-N
/A-N/A-20210224225123199386