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. 85729785 SIMPLICITY(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85729785) has been amended as follows:

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

No conflicting registrations have been found that would bar the registration of the applied-for mark. It is noted, in this regard, that Reg. No. 4,206,506 to SIMPLICITY belongs to applicant. The assignment is in the process of being registered.

Three earlier-filed applications have been found by the Examining Attorney that could potentially bar the registration of the applied-for mark. The marks of the applications are not indeed "problematic" and the mark could be registered even if the marks of the pending applications ever were registered.

It appears, however, that they will not. To wit:

Application No. 85019899 CADIA ABUNDANCE OF SIMPLICITY is a 1b application. A third extension request has been filed. It is less than certain that the application will become a registration. Even more importantly, the mark is at most tangentially related with the mark SIMPLICITY of the application. The vastly dominant term in the mark is CADIA. The remainder of the mark appears in design form. Also, the goods are different from the goods in the application (especially after the amended ID). No potential for a confusion exists.

Application No. 85457226 SIMPLICITY HAIR OIL BLEND is a 1b application as well. An opposition is pending with reference to Reg. No. 4,206,506. As noted above, the registration belongs to applicants.

Application No. 85506118 SWEET SIMPLICITY is a 1b application as well. A first extension request has been filed. The goods in the application are depilatories and depilatory creams. Such goods are extremely different from the goods of the application. The goods of the application are adhesive removers for hair extension adhesives. The depilatories of the reference application are entirely different and they are traded in entirely different channels of trade. The pertinent consumers are also different and a potential for confusion is non-existent.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for hair extension removers
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 06/30/2011 and first used in commerce at least as early as 06/30/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: hair extension removers; hair extension adhesive removersClass 003 for hair extension adhesive removers
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 06/30/2011 and first used in commerce at least as early as 06/30/2011 , and is now in use in such commerce.
ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Werner H. Stemer of Lerner Greenberg Stemer LLP, having an address of
P.O Box 2480 Hollywood, Florida 33022-2480
United States
trademarks@patentusa.com
954-925-1100
954-925-1101
The attorney docket/reference number is X-Luba .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Proposed:
Werner H. Stemer of Lerner Greenberg Stemer LLP, having an address of
P.O Box 2480 Hollywood, Florida 33022-2480
United States
trademarks@patentusa.com;lzeldis2000@yahoo.com
954-925-1100
954-925-1101
The docket/reference number is X-Luba .



SIGNATURE(S)
Response Signature
Signature: /Werner H. Stemer/     Date: 07/11/2013
Signatory's Name: Werner H. Stemer
Signatory's Position: Attorney of record, Florida bar member

Signatory's Phone Number: 954-925-1100

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.

Mailing Address:    Werner H. Stemer
   Lerner Greenberg Stemer LLP
   P.O Box 2480
   Hollywood, Florida 33022-2480
        
Serial Number: 85729785
Internet Transmission Date: Thu Jul 11 09:12:07 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2013071109120717
5951-85729785-50032abb1256240c7244421516
e4d5e86dd73e94c852a5cce147f9f627a75a4b-N
/A-N/A-20130711085227297044