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. 85796553 CHLOE(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85796553) has been amended as follows:

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

REMARKS

            The Examining Attorney has required Applicant to amend its identifications of services in Classes 35 and 42. Applicant has now amended the identifications of services to satisfy this requirement.

            Finally, the Examining Attorney has made an inquiry with respect to the Class 42 services as originally worded. Applicant notes that it has made significant amendments to Class 42 and does not know whether the Request for Information still applies. However, Applicant notes that it plans to create and operate a registry for .CHLOE as a new top-level domain name. The CHLOE mark will be used in association with this and related services such as those in Class 42.

            With the above, Applicant respectfully submits that all questions are now answered and requests the application be approved for publication for opposition purposes.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, creams, lotions, deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and chords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Community application number 010951762 filed 06/08/2012]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community registration number 010951762 registered 11/29/2012 with a renewal date of __________ and an expiration date of 06/08/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, creams, lotions, deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and chords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, skin creams, skin lotions, creams and lotions for the face, body, and the hands, body deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and cords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, leather and imitation leather bags, backpacks, clutch bags, beach bags, shopping bags, sling bags for carrying infants, cosmetic bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising servicesClass 035 for Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, skin creams, skin lotions, creams and lotions for the face, body, and the hands, body deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and cords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, leather and imitation leather bags, backpacks, clutch bags, beach bags, shopping bags, sling bags for carrying infants, cosmetic bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising services
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 010951762 filed 06/08/2012]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 010951762 registered 11/29/2012 with a renewal date of __________ and an expiration date of 06/08/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunication services, namely, routing of Internet queries from end users to website hosting providers
Original Filing Basis:
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 038 for Telecommunication services, namely, routing of Internet queries from end users to website hosting providers
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 010951762 filed 06/08/2012]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 010951762 registered 11/29/2012 with a renewal date of __________ and an expiration date of 06/08/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services for registering, managing and tracking computer network domain names, domain name registry services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the Internet; providing an online computer database in the field of domain name registration information; verification of identities for the purpose of permitting or denying access to information and services
Original Filing Basis:
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer services for registering, managing and tracking computer network domain names, domain name registry services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the Internet; Computer services, namely, domain forwarding services; providing an online computer database in the field of domain name registration information; domain name search services, namely, conducting online computerized searches for the availability of domain names; verification of identities for the purpose of permitting or denying access to information and services; computer security services, namely restricting access to computer networks to authorized users by means of a website featuring technology that verifies user identities; Internet Protocol (IP) address verification servicesClass 042 for Computer services, namely, domain forwarding services; domain name search services, namely, conducting online computerized searches for the availability of domain names; computer security services, namely restricting access to computer networks to authorized users by means of a website featuring technology that verifies user identities; Internet Protocol (IP) address verification services
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 010951762 filed 06/08/2012]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 010951762 registered 11/29/2012 with a renewal date of __________ and an expiration date of 06/08/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Registration of domain names for identification of users on a global computer network
Original Filing Basis:
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Registration of domain names for identification of users on a global computer network; providing an online computer database in the field of domain name registration information; providing user authentication services in e-commerce transactionsClass 045 for Registration of domain names for identification of users on a global computer network; providing an online computer database in the field of domain name registration information; providing user authentication services in e-commerce transactions
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 010951762 filed 06/08/2012]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 010951762 registered 11/29/2012 with a renewal date of __________ and an expiration date of 06/08/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Response Signature
Signature: /lea/     Date: 07/11/2013
Signatory's Name: Lawrence E. Apolzon
Signatory's Position: Attorney of Record, New York State Bar Member

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: 85796553
Internet Transmission Date: Thu Jul 11 20:06:41 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20130711200641631
163-85796553-500d6cee4ddef23934d13cc8c52
fba2aade7ec36a4eaa37c29d9940a57d7ce8-N/A
-N/A-20130711194156851302