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. 85593395 FIVE STAR (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85593395) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: FIVE STAR (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85593395)
Proposed: FIVE STAR (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the words FIVE STAR on top of five stars.

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

In response to the Office Action dated April 27, 2012, applicant responds as follows:

Potential Refusal under Trademark Act Section 2(d).  The application cited by the Examining Attorney, Serial No. 77422552, has been abandoned.  Accordingly, this application should no longer be a potential conflict to registration of applicant’s mark.

Drawing of the Mark.  In response to the objections to the drawing, a substitute drawing is attached hereto.

Classification of Goods.  The identification of goods has been amended as suggested by the examining attorney.

In view of the foregoing, the applicant respectfully request the that the Examining Attorney approve its mark for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for dry erase writing board fitted with fabric pocket for storage; binders fitted with magnets for affixation to locker; magnetic pencil cup
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: dry erase writing board fitted with fabric pocket for storage; binders fitted with magnets for affixation to locker; magnetic pencil cup; photo album that unfolds for affixation to lockerClass 016 for dry erase writing board fitted with fabric pocket for storage; binders fitted with magnets for affixation to locker; magnetic pencil cup; photo album that unfolds for affixation to locker
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for shelving for lockers; hanging locker shelving made of fabric; locker mirrors, and locker mirrors fitted with fabric pocket for storage; photo album that unfolds for affixation to locker; locker organizer comprised of mirror, dry erase white board and pencil cup; non-metal fabric storage bin organizer; non-metal fabric locker organizer
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: shelving for lockers; hanging locker shelving made of fabric; locker mirrors, and locker mirrors fitted with fabric pocket for storage; photo album that unfolds for affixation to locker; locker organizer comprised of mirror, dry erase white board and pencil cup; non-metal fabric storage bin organizer; non-metal fabric locker organizerClass 020 for shelving for lockers; hanging locker shelving made of fabric; locker mirrors, and locker mirrors fitted with fabric pocket for storage; locker organizer comprised of mirror, dry erase white board and pencil cup; non-metal fabric storage bin organizer; non-metal fabric locker organizer
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Mark P. Levy/     Date: 10/17/2012
Signatory's Name: Mark P. Levy
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 937-443-6949

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: 85593395
Internet Transmission Date: Wed Oct 17 14:17:47 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20121017141747639
167-85593395-490a953ae97277eea889f136c27
b5a392c-N/A-N/A-20121015112644402332