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. 85619563 ST. IVES (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85619563) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Soap; medicated soap; non-medicated toilet preparations; bath and shower preparations; skin care preparations; oils, creams and lotions for the skin; petroleum jelly; lip care preparations; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; facial packs; perfumery; deodorants and antiperspirants; hair care preparations; shaving preparations; sun protection preparations; cosmetics; make-up and make-up removing preparations
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: Soap; medicated soap; non-medicated toilet preparations; non-medicated toilet preparations, namely oils, creams and lotions for the skin; bath and shower preparations; non-medicated bath and shower preparations; skin care preparations; non-medicated skin care preparations; oils, creams and lotions for the skin; petroleum jelly; petroleum jelly for cosmetic purposes; lip care preparations; non-medicated lip care preparations; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; facial packs; perfumery; deodorants and antiperspirants; hair care preparations; shaving preparations; sun protection preparations; cosmetics; make-up and make-up removing preparationsClass 003 for Soap; medicated soap; non-medicated toilet preparations, namely oils, creams and lotions for the skin; non-medicated bath and shower preparations; non-medicated skin care preparations; oils, creams and lotions for the skin; petroleum jelly for cosmetic purposes; non-medicated lip care preparations; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; facial packs; perfumery; deodorants and antiperspirants; hair care preparations; shaving preparations; sun protection preparations; cosmetics; make-up and make-up removing preparations
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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of stylized wording "ST. IVES" appearing in the color blue with the right side of the letter V represented as a leaf in the color green.

Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 1172768, 1601761, and 2748930.


SIGNATURE(S)
Response Signature
Signature: /esd/     Date: 02/27/2013
Signatory's Name: Erica S. D'Angelo
Signatory's Position: Authorized attorney at the firm of record; NY State bar member

Signatory's Phone Number: 212-626-4813

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: 85619563
Internet Transmission Date: Wed Feb 27 16:27:47 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201302271627474
06786-85619563-500e89d2138a4a7cd8f5129a3
631ba8a924dfe582df26b4e7a71a4014a76b9a64
a8-N/A-N/A-20130227162352885274