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. 85723279 SHIMA(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85723279) 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 025 for CLOTHING, NAMELY, SHIRTS, PANTS, TROUSERS, DRESSES, CARDIGANS, PULLOVERS, SKIRTS, SWEATERS, SUITS, JACKETS, COATS, VESTS; HEADWEAR; FOOTWEAR; UNDERWEAR; SCARVES, HANDKERCHIEFS; GLOVES; SOCKS; TIES; BELTS
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: CLOTHING, NAMELY, SHIRTS, PANTS, TROUSERS, DRESSES, CARDIGANS, PULLOVERS, SKIRTS, SWEATERS, SUITS, JACKETS, COATS, VESTS; HEADWEAR; FOOTWEAR; UNDERWEAR; SCARVES, HANDKERCHIEFS; SCARVES; GLOVES; SOCKS; TIES; BELTSClass 025 for CLOTHING, NAMELY, SHIRTS, PANTS, TROUSERS, DRESSES, CARDIGANS, PULLOVERS, SKIRTS, SWEATERS, SUITS, JACKETS, COATS, VESTS; HEADWEAR; FOOTWEAR; UNDERWEAR; SCARVES; GLOVES; SOCKS; TIES; BELTS
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 035 for RETAIL SALE OF CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ON-LINE RETAIL TRADE, PROVIDED BY A COMPUTER NETWORK, OFFERING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ADVERTISING AND PROMOTIONAL SERVICES, ON-LINE ADVERTISING ON A COMPUTER NETWORK; PROVIDING OF COMMERCIAL INFORMATION ON FASHION
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: RETAIL SALE OF CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; RETAIL STORE SERVICES FEATURING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ON-LINE RETAIL TRADE, PROVIDED BY A COMPUTER NETWORK, OFFERING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ON-LINE RETAIL TRADE SERVICES, PROVIDED BY A COMPUTER NETWORK, FEATURING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ADVERTISING AND PROMOTIONAL SERVICES, ON-LINE ADVERTISING ON A COMPUTER NETWORK; PROVIDING OF COMMERCIAL INFORMATION ON FASHION; PROVIDING OF COMMERCIAL INFORMATION IN THE FIELD OF FASHIONClass 035 for RETAIL STORE SERVICES FEATURING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ON-LINE RETAIL TRADE SERVICES, PROVIDED BY A COMPUTER NETWORK, FEATURING CLOTHING, HEADGEAR, FOOTWEAR, UNDERWEAR, AND TEXTILE GOODS; ADVERTISING AND PROMOTIONAL SERVICES, ON-LINE ADVERTISING ON A COMPUTER NETWORK; PROVIDING OF COMMERCIAL INFORMATION IN THE FIELD OF FASHION
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
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 2128634 and 2132218.


Miscellaneous Statement
SHIMA appearing in the mark does not have any significance in the clothing or retail trade or industry or as applied to the goods/services described in the application, nor is it a "term of art" within applicant's industry or has any meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Robert B. Murray/     Date: 02/05/2013
Signatory's Name: Robert B. Murray
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202-783-6040

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: 85723279
Internet Transmission Date: Thu Feb 07 14:57:38 EST 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2013020714573801
9762-85723279-50006d2650ffd5e3d25491b9bf
a8c9875e5852fc67e1bcb84e55cf2458874cd0-N
/A-N/A-20130205095103236732