Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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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. 85152592 has been amended as follows:

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

The Examining Attorney has cited Application No. 85/152,580 for SM Logo as a potential bar to this application.  Applicant is a related company to the applicant for the cited application.  Therefore, there will not be any likelihood of confusion as to the source of the mark in the subject application, and the citation to the prior application should accordingly be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail Sale of Goods
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Philippines application number 04-2010-0039 filed 04/14/2010]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Retail Sale of Goods; Retail department store servicesClass 035 for Retail department store services
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Philippines application number 04-2010-0039 filed 04/14/2010]. 15 U.S.C.Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use DEPARTMENT STORE apart from the mark as shown.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_681993268-104820169_._SM_DEPARTMENT_STORE_dec.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Jamie C. Aguilar
Signatory's Position: Legal Counsel

Response Signature
Signature: /Laura J. Winston/     Date: 07/25/2011
Signatory's Name: Laura J. Winston
Signatory's Position: Attorney of record, New York bar member

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.

        
Serial Number: 85152592
Internet Transmission Date: Mon Jul 25 11:05:50 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20110725110550616
645-85152592-4809dbceca2c13c8399864487a3
457b8-N/A-N/A-20110725104820169225