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. 85958386 ROWENTA (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85958386) has been amended as follows:

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

The examining attorney has raised three issues.  In response, applicant is amending the idenitification of goods and adding a claim of ownership of prior registrations. 

With respect to the examining attorney's assertion that "electric hair straighteners" are not included in the home country registration, applicant notes that these goods were included in the application only pursuant to Section 1(b).  They were not included in the Section 44(e) claim in the application as filed.

There seems to be an ongoing computer issue when applicants file for some goods in a class under 1(b) and others under 44(e).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Clippers (electric and manual), hair removing machines (electric and manual), electric razors, electric manicure and podiatry apparatus; Electric hair straighteners
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community registration number 002795714 registered 02/26/2004 with a renewal date of __________ and an expiration date of 02/26/2014 ], 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: Clippers (electric and manual), hair removing machines (electric and manual), electric razors, electric manicure and podiatry apparatus; Electric and manual hair clippers, depilatory appliances, electric shavers, electric razors, electric manicure and pedicure sets, electric hair straighteners; Electric hair straightenersClass 008 for Electric and manual hair clippers, depilatory appliances, electric shavers, electric razors, electric manicure and pedicure sets, electric hair straighteners
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 002795714 registered 02/26/2004 with a renewal date of __________ and an expiration date of 02/26/2014 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Heating apparatus, electric hair dryers (with nozzles), electrically heated crimping tongs, electric heating apparatus, radiators (radiant heat), room air conditioners, electric ventilation apparatus (fans), electric humidifiers, electric plate warmers; apparatus for making beverages made with hot water (kettles, electrical coffee brewing machines, espresso cafetières), electric apparatus for cooking eggs, electric deep-fat fryers, electric woks, electric pierrade sets, electric raclette apparatus, electric waffle irons, electric steamers, electric rice cookers, electric sandwich toasters, electric ovens, electric grill pans/frying pans and rotisseries; and parts and accessories of the aforesaid goods; ironing tables for steam ironing
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Germany registration number 002795714 registered 02/26/2004 with a renewal date of __________ and an expiration date of 02/26/2014 ], 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: Heating apparatus, electric hair dryers (with nozzles), electrically heated crimping tongs, electric heating apparatus, radiators (radiant heat), room air conditioners, electric ventilation apparatus (fans), electric humidifiers, electric plate warmers; Heating apparatus, namely, radiators and electric radiant heaters for household purposes, electric hair dryers and parts and fittings therefor, electrically heated hair crimpers, room air conditioners, electric ventilation fans for household use, electric humidifiers, electric plate warmers; apparatus for making beverages made with hot water (kettles, electrical coffee brewing machines, espresso cafetières), electric apparatus for cooking eggs, electric deep-fat fryers, electric woks, electric pierrade sets, electric raclette apparatus, electric waffle irons, electric steamers, electric rice cookers, electric sandwich toasters, electric ovens, electric grill pans/frying pans and rotisseries; apparatus for making beverages made with hot water namely, electric kettles, electrical coffee brewing machines and electric espresso machines, electric apparatus for cooking eggs, electric deep-fat fryers, electric woks, electric griddle, electric raclette apparatus, namely, electric apparatus consisting in a grill under which individual frying pans are set in order to melt cheese, namely, raclette cheese, and on top of which a metallic piece serves as a chafing dish, electric waffle irons, electric rice steamers, electric rice cookers, electric sandwich toasters, electric cooking ovens, electric grill pans/frying pans and rotisseries; and parts and accessories of the aforesaid goods; and replacement part of the aforesaid goods; ironing tables for steam ironing; garment steamersClass 011 for Heating apparatus, namely, radiators and electric radiant heaters for household purposes, electric hair dryers and parts and fittings therefor, electrically heated hair crimpers, room air conditioners, electric ventilation fans for household use, electric humidifiers, electric plate warmers; apparatus for making beverages made with hot water namely, electric kettles, electrical coffee brewing machines and electric espresso machines, electric apparatus for cooking eggs, electric deep-fat fryers, electric woks, electric griddle, electric raclette apparatus, namely, electric apparatus consisting in a grill under which individual frying pans are set in order to melt cheese, namely, raclette cheese, and on top of which a metallic piece serves as a chafing dish, electric waffle irons, electric rice steamers, electric rice cookers, electric sandwich toasters, electric cooking ovens, electric grill pans/frying pans and rotisseries; and replacement part of the aforesaid goods; garment steamers
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 002795714 registered 02/26/2004 with a renewal date of __________ and an expiration date of 02/26/2014 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Brushes, tooth brushes, combs and electric brushes, electric tooth brushes, dental jets, skillets, lids, pressure cookers, utensils and containers for household and kitchen, glass pourers, thermos flasks; and parts and accessories of the aforesaid goods; hand-operated domestic appliances, namely coffee grinders, fruit and vegetable presses, kitchen utensils; and parts and accessories of the aforesaid goods; steamer brushes; ironing boards
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community registration number 002795714 registered 02/26/2004 with a renewal date of 02/26/2014 and an expiration date of 02/26/2014 ], 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: Brushes, tooth brushes, combs and electric brushes, electric tooth brushes, dental jets, skillets, lids, pressure cookers, utensils and containers for household and kitchen, glass pourers, thermos flasks; Hair brushes, tooth brushes, combs and electrically-heated hair brushes, electric tooth brushes, skillets, pot lids, non-electric pressure cookers, kitchen and household utensils and containers, namely, glass cans, trash cans and utensil holders; and parts and accessories of the aforesaid goods; thermo-insulated drinking flasks, replacement part of the aforesaid goods; hand-operated domestic appliances, namely coffee grinders, fruit and vegetable presses, kitchen utensils; hand-operated domestic appliances, namely coffee grinders, fruit and vegetable presses; and parts and accessories of the aforesaid goods; steamer brushes; garment steamers; ironing boards; ironing boardClass 021 for Hair brushes, tooth brushes, combs and electrically-heated hair brushes, electric tooth brushes, skillets, pot lids, non-electric pressure cookers, kitchen and household utensils and containers, namely, glass cans, trash cans and utensil holders; thermo-insulated drinking flasks, replacement part of the aforesaid goods; hand-operated domestic appliances, namely coffee grinders, fruit and vegetable presses; steamer brushes; garment steamers; ironing board
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 002795714 registered 02/26/2004 with a renewal date of 02/26/2014 and an expiration date of 02/26/2014 ], 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.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 1969134, 2916580, 2918498, and others.


Miscellaneous Statement
As noted, in contrast to other goods in class 8, "electric hair straighteners" in class 8 were not included in the 44(e) basis in the original application. The computer system seems to have combined all the class 8 goods without maintaining the distinction. If there is a way to indicate those goods (as opposed to the other goods in class 8) are included under Section 1(b) only, it is not apparent. But that was and has been the applicant's intention.


SIGNATURE(S)
Response Signature
Signature: /dwg/     Date: 02/04/2014
Signatory's Name: David W. Grace
Signatory's Position: Attorney, Calif. bar

Signatory's Phone Number: 310-282-2108

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: 85958386
Internet Transmission Date: Tue Feb 04 23:51:23 EST 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140204235123413
424-85958386-5005a9e963717ecbc03e7054716
3617b14546527de2050189aba3ed794569d5d6-N
/A-N/A-20140204232135059581