PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
85481553 |
LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
MARK SECTION |
MARK |
http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85481553 |
LITERAL ELEMENT |
PRIMUS |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Please note the change to the identification of goods and the new specimens featuring bundles of fiber and yarn used to make carpets. There
is no reasonable liklihood of confusion by and between Registrant's trademark for "vinyl floor coverings" and Applican't's trademark for bundles of fiber and yarn because the goods are
distinct. Registrant sells vinyl floor coverings to the end user under the name PRIMUS. PRIMUS is the brand name of the vinyl floor covering, This vinyl floor covering is not
made with yarm or fiber. Applicant sells yarn and fiber to carpet manufacturers and uses their own yarn and fiber to manufacture carpet. PRIMUS is the name of the yarn/fiber and is
used as a component part of the carpet. It is not the name of the carpet. PRIMUS is not the name of any floor covering. PRIMUS yarn and fiver is sold to and used by manufacturers -
not the end user of carpet so the channels of trade are also distinct. Carpet manufacturers are also highly educated consumers of yarn and fiber for use in their industry. They would
not place an order for yarm or fiber and inadvertantly purchase vinyl flooring. They are an educated consumer. Please reconsider your refusal. |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
023 |
DESCRIPTION |
YARN AND FIBERS USED TO MAKE CARPET AND RUGS |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 11/15/2011 |
FIRST USE IN COMMERCE DATE |
At least as early as 11/15/2011 |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
023 |
DESCRIPTION |
YARN AND FIBERS USED TO MAKE CARPET AND RUGS |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 11/15/2011 |
FIRST USE IN COMMERCE DATE |
At least as early as 11/15/2011 |
STATEMENT TYPE |
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in
commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b)
Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an
illegible specimen]. |
SPECIMEN
FILE NAME(S) |
\\TICRS\EXPORT11\IMAGEOUT 11\854\815\85481553\xml4\ ROA0002.JPG |
|
\\TICRS\EXPORT11\IMAGEOUT 11\854\815\85481553\xml4\ ROA0003.JPG |
SPECIMEN DESCRIPTION |
photos of yarn/fiber with label |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/rmorris/ |
SIGNATORY'S NAME |
RICHARD L MORRIS JR ESQ |
SIGNATORY'S POSITION |
ATTORNEY OF RECORD |
SIGNATORY'S PHONE NUMBER |
3056736686 |
DATE SIGNED |
04/24/2012 |
RESPONSE SIGNATURE |
/rmorris/ |
SIGNATORY'S NAME |
RICHARD L MORRIS JR ESQ |
SIGNATORY'S POSITION |
ATTORNEY OF RECORD |
DATE SIGNED |
04/24/2012 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Apr 24 09:19:00 EDT 2012 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XXX-2
0120424091900151190-85481
553-4907abaebf6c4c9a671fa
ffcbd5593d52c-N/A-N/A-201
20424091111168700 |
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.
85481553 PRIMUS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85481553) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Please note the change to the identification of goods and the new specimens featuring bundles of fiber and yarn used to make carpets. There is no reasonable liklihood of confusion by and
between Registrant's trademark for "vinyl floor coverings" and Applican't's trademark for bundles of fiber and yarn because the goods are distinct. Registrant sells vinyl floor coverings to the
end user under the name PRIMUS. PRIMUS is the brand name of the vinyl floor covering, This vinyl floor covering is not made with yarm or fiber. Applicant sells yarn and
fiber to carpet manufacturers and uses their own yarn and fiber to manufacture carpet. PRIMUS is the name of the yarn/fiber and is used as a component part of the carpet. It is not the
name of the carpet. PRIMUS is not the name of any floor covering. PRIMUS yarn and fiver is sold to and used by manufacturers - not the end user of carpet so the channels of trade
are also distinct. Carpet manufacturers are also highly educated consumers of yarn and fiber for use in their industry. They would not place an order for yarm or fiber and
inadvertantly purchase vinyl flooring. They are an educated consumer. Please reconsider your refusal.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 023 for YARN AND FIBERS USED TO MAKE CARPET AND RUGS
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/15/2011 and first used in commerce at least as early as 11/15/2011 , and
is now in use in such commerce.
Proposed: Class 023 for YARN AND FIBERS USED TO MAKE CARPET AND RUGS
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/15/2011 and first used in commerce at least as early as 11/15/2011 , and
is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 023 . The specimen(s) submitted consists of photos of yarn/fiber with label .
"
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based
on Section 1(a), Use in Commerce] OR "
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to
Allege Use or expiration of the filing deadline for filing a Statement of Use"
[for an application based on Section 1(b) Intent-to-Use].
OR "The attached specimen is a true copy
of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1
Specimen File2
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 and/or services listed in the application as of the application filing
date or as of the date of any submitted allegation of use. 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. 2.44. 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. Section 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. Section 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: /rmorris/ Date: 04/24/2012
Signatory's Name: RICHARD L MORRIS JR ESQ
Signatory's Position: ATTORNEY OF RECORD
Signatory's Phone Number: 3056736686
Response Signature
Signature: /rmorris/ Date: 04/24/2012
Signatory's Name: RICHARD L MORRIS JR ESQ
Signatory's Position: ATTORNEY OF RECORD
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: 85481553
Internet Transmission Date: Tue Apr 24 09:19:00 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2012042409190015
1190-85481553-4907abaebf6c4c9a671faffcbd
5593d52c-N/A-N/A-20120424091111168700