Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 85581693 FORTE(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85581693) has been amended as follows:

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

Our application for the mark "FORTE" raised a flag because of one prior pending application by Kohler Co. (Serial No. 85496164). While both "FORTE" marks have been filed under IC 020, I do not believe that our trademark is likely to cause confusion as to the source of our goods for the following reason: Kohler Co.'s mark "FORTE" refers to a collection of kitchen and bathroom parts and accessories being sold under the brand "Kohler." Our mark "FORTE" refers to a specific model of workstation made primarily of metal consisting of a wheeled cabinet with multiple working surfaces being sold under the brand "TATSoul." Kohler's FORTE collection includes many furniture parts, including metal drawer pulls. While our TATSoul FORTE Workstation includes metal drawers with metal pulls, we will not sell the furniture parts of the FORTE Workstation individually: TATSoul is only interested in using the FORTE mark to represent the FORTE Workstation, a specific model of workstation furniture. To further avoid confusion, TATSoul is willing to remove mention of metal furniture to limit the scope of the goods identification to specifically cover metal cabinets and workstations. We hope that these amendments will be enough to avoid confusion with the prior pending application for the "FORTE" mark.

EVIDENCE
Evidence in the nature of Evidence consists of two files of the "FORTE" Workstation packaging. The first of the front of the box, with the TATSoul Logo and a line drawing of the "FORTE" Workstation. The second file is of the side of the box, which clearly shows the model name of the workstation: "FORTE." has been attached. Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Furniture; Furniture chests; Furniture of metal; Metal cabinets; Metal furniture; Metal storage cabinets; Metal tool cabinets; Workstations having multi-use work surfaces for use in a wide variety of fields
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 09/15/2011 and first used in commerce at least as early as 01/23/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Furniture; Metal cabinets; Furniture chests; Metal storage cabinets; Furniture of metal; Metal tool cabinets; Workstations having multi-use work surfaces for use in a wide variety of fields; Metal furnitureClass 020 for Metal cabinets; Metal storage cabinets; Metal tool cabinets; Workstations having multi-use work surfaces for use in a wide variety of fields
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 09/15/2011 and first used in commerce at least as early as 01/23/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 020 .
"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].

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: /Billy Chen/      Date: 09/09/2012
Signatory's Name: Billy Chen
Signatory's Position: Owner
Signatory's Phone Number: 7142716000



Signature: /Michael Chen/      Date: 09/09/2012
Signatory's Name: Michael Chen
Signatory's Position: Owner
Signatory's Phone Number: 7143572855



Signature: /Wen Wei/      Date: 09/09/2012
Signatory's Name: Wen Wei
Signatory's Position: Owner
Signatory's Phone Number: 8315359061


Response Signature
Signature: /Billy Chen/     Date: 09/09/2012
Signatory's Name: Billy Chen
Signatory's Position: Owner

Signatory's Phone Number: 7142716000

Response Signature
Signature: /Michael Chen/     Date: 09/09/2012
Signatory's Name: Michael Chen
Signatory's Position: Owner

Signatory's Phone Number: 7143572855

Response Signature
Signature: /Wen Wei/     Date: 09/09/2012
Signatory's Name: Wen Wei
Signatory's Position: Owner

Signatory's Phone Number: 7142716000

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 85581693
Internet Transmission Date: Sun Sep 09 22:07:24 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20120909220724195
962-85581693-4904555cfadfbcfd0ef7eee59d1
17207e18-N/A-N/A-20120909213457954250