TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85973192  (Stylized and/or with Design, see http://uspto.report/TM/85973192/mark.png) 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 009 for Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing equipment, computers; computer software; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; scientific apparatus and instruments not for medical purposes, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking, supervising, life-saving and teaching apparatus and instruments; cases adapted for photographic and cinematographic apparatus
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: Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; optical apparatus and instruments, namely, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; blank magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing equipment, computers; data processing apparatus, computers; computer software; computer software for use in database management, use as a spreadsheet, word processing; computer software used for management of information stored in databases, e-mail archives, document management systems, multimedia files, intranet sites, and internet sites; mechanisms for coin-operated apparatus; cash registers, calculating machines; scientific apparatus and instruments not for medical purposes, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking, supervising, life-saving and teaching apparatus and instruments; fire-extinguishing apparatus; cases adapted for photographic and cinematographic apparatus; nautical and photographic apparatus and instruments, namely, underwater housings for cameras, underwater enclosures for cameras and underwater enclosures for photographic lenses; signaling buoys, speed checking apparatus for water vehicles, life boats (rafts), lifesaving equipment, namely, life jackets, life belts, life rafts, life nets, life buoys, life preservers; surveying machines and instruments; photographic machines and instruments, namely, bags for cameras and photographic equipment, lenses for photographic apparatus; Cinematographic machines and apparatus; Weighing apparatus and instruments; weighing equipment, namely, scales and balances; Measuring glassware, measuring cups, measuring tapes, measuring spoons, measuring rules, distance measuring apparatus; Reflectors for traffic signals; vehicle traffic signals, signal bells; rotating lights (signaling); fiber signal transmitter, navigational signal device, telephone signal sampling adder, electro-dynamic apparatus for the remote control of signals, transmitters of electronic, satellite signal/communication processor; Technical measuring, testing and checking apparatus and instruments for measuring, testing and checking the temperature, pressure, quantity and concentration of gas and liquidsClass 009 for Spectacle frames, spectacles, sunglasses, tinted or anti-glare spectacles, protective goggles, pince-nez, opera glasses, magnifying glasses, spectacle cases and containers for contact lenses; optical apparatus and instruments, namely, correcting optical lenses, spectacle glasses, contact lenses, tinted lenses or filter lenses, protective lenses, magnifying lenses, optical lenses, contact lenses; apparatus for recording, transmission or reproduction of data, sound or images; telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely hands-free kits for telephones, batteries, covers, cases, fascias, chargers, mobile phone straps, wrist or neck straps; electronic handheld units for the wireless transmission of data and/or voice signals; accessories for electronic handheld units for the wireless transmission of data and/or voice signals, namely batteries, car kits, chargers and charging pods, headsets, clips/cases for fixing to belts, headphone sets, adapters, adapter cases, desk stands, docking stations, computer cables, cases and covers for portable computers, covers, battery housings; blank magnetic data carriers, recording discs, compact discs, DVDs, USB flash drives and other digital recording media; data processing apparatus, computers; computer software for use in database management, use as a spreadsheet, word processing; computer software used for management of information stored in databases, e-mail archives, document management systems, multimedia files, intranet sites, and internet sites; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; cases adapted for photographic and cinematographic apparatus; nautical and photographic apparatus and instruments, namely, underwater housings for cameras, underwater enclosures for cameras and underwater enclosures for photographic lenses; signaling buoys, speed checking apparatus for water vehicles, life boats (rafts), lifesaving equipment, namely, life jackets, life belts, life rafts, life nets, life buoys, life preservers; surveying machines and instruments; photographic machines and instruments, namely, bags for cameras and photographic equipment, lenses for photographic apparatus; Cinematographic machines and apparatus; Weighing apparatus and instruments; weighing equipment, namely, scales and balances; Measuring glassware, measuring cups, measuring tapes, measuring spoons, measuring rules, distance measuring apparatus; Reflectors for traffic signals; vehicle traffic signals, signal bells; rotating lights (signaling); fiber signal transmitter, navigational signal device, telephone signal sampling adder, electro-dynamic apparatus for the remote control of signals, transmitters of electronic, satellite signal/communication processor; Technical measuring, testing and checking apparatus and instruments for measuring, testing and checking the temperature, pressure, quantity and concentration of gas and liquids
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 016 for Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; artists' materials; paint brushes; catalogs, newspapers, magazines, handbooks, leaflets and manuals , books, magazines; periodicals; pamphlets; printed publications; printed photographs; stationery; posters; stationary stickers; paper and cardboard; wrappers of cardboard or paper; bags, envelopes and pouches of paper for packaging; signboards of paper or cardboard, note books; plastic materials for packaging namely: bags, small bags, pouches; non-magnetic subscription cards, fountain pens; pencils; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, chequebooks, diaries, stationary covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; hat boxes of cardboard; paper knives and cutters for office uses, stationery envelopes, labels, not of textile; writing paper; bookmarkers; Passport holders; holders for checkbooks; indexes
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: Paper, cardboard and goods made from these materials, not included in other classes; Paper, cardboard, cardboard articles, graphic prints, greeting cards, note cards, trading cards, calendars, loose-leaf binders, blank journal books, blank drawing books, chromolithographs [chromos], paper clasps, tags for index cards; printed matter; bookbinding material; artists' materials; paint brushes; printed publications, namely, catalogs, periodicals, pamphlets, newspapers, magazines, handbooks, leaflets, manuals and books in the fields of fashion and photography; catalogs, newspapers, magazines, handbooks, leaflets and manuals , books, magazines; printed photographs; periodicals; stationery; pamphlets; posters; printed publications; stationery stickers; paper and cardboard; wrappers of cardboard or paper; bags, envelopes and pouches of paper for packaging; stationary stickers; signboards of paper or cardboard, note books; plastic materials for packaging namely bags, small bags, pouches; non-magnetic subscription cards, fountain pens; pencils; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, cheque books, diaries, stationery covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; plastic materials for packaging namely: bags, small bags, pouches; hat boxes of cardboard; stationery envelopes, labels, not of textile; writing paper; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, chequebooks, diaries, stationary covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; bookmarkers; Passport holders; paper knives and cutters for office uses, stationery envelopes, labels, not of textile; holders for checkbooks; index cards, paper knives and cutters for office uses; indexesClass 016 for Paper, cardboard, cardboard articles, graphic prints, greeting cards, note cards, trading cards, calendars, loose-leaf binders, blank journal books, blank drawing books, chromolithographs [chromos], paper clasps, tags for index cards; bookbinding material; artists' materials; paint brushes; printed publications, namely, catalogs, periodicals, pamphlets, newspapers, magazines, handbooks, leaflets, manuals and books in the fields of fashion and photography; printed photographs; stationery; posters; stationery stickers; paper and cardboard; wrappers of cardboard or paper; bags, envelopes and pouches of paper for packaging; signboards of paper or cardboard, note books; plastic materials for packaging namely bags, small bags, pouches; non-magnetic subscription cards, fountain pens; pencils; pencil holders, writing instruments, writing cases sold as a set and their fittings, notepads, writing pads, business cards, cheque books, diaries, stationery covers for diaries, postcards, engravings, lithographs, portraits, embroidery design patterns, patterns for making clothes, patterns for dressmaking, coasters of paper, place mats of paper, table napkins of paper, tablecloths of paper, curtains of paper, blinds of paper, face towels of paper, tablecloths of paper, money clip; hat boxes of cardboard; stationery envelopes, labels, not of textile; writing paper; bookmarkers; Passport holders; holders for checkbooks; index cards, paper knives and cutters for office uses
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 018 for Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); umbrellas, parasols, walking sticks; harness for animals, whips, saddlery
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: Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attache cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, key cases (Ieatherware); handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attaché cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, leather key cases; umbrellas, parasols, walking sticks; harness for animals, whips, saddleryClass 018 for Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attaché cases, leather diary cases, school bags, school satchels, beach bags, bags for sports, belt bags, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets namely coordinated luggage sets for travel, leather key cases; umbrellas, parasols, walking sticks; harness for animals, whips, saddlery
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 025 for Men's, women's and children's clothing, namely suits, coats, jackets, pants, shirts, raincoats, sweatsuits, underwear, pullovers, knit shirts, and under garments; evening wear, namely evening dresses, evening gowns, evening wraps, tuxedos, blazers, and three-quarter coats; hosiery, namely socks and stockings; knitwear clothing, namely sweaters, knitted underwear, and knit caps; sportswear, namely sports shirts, sport jerseys, sport pants; clothing accessories, namely suspenders, ties, bow ties, and scarves; belts for clothing; gloves; footwear and headgear
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: Men's, women's and children's clothing, namely suits, coats, jackets, pants, shirts, raincoats, sweatsuits, underwear, pullovers, knit shirts, and under garments; evening wear, namely evening dresses, evening gowns, evening wraps, tuxedos, blazers, and three-quarter coats; evening wear, namely, evening dresses, evening gowns, evening wraps, tuxedos, blazers, and three-quarter coats; hosiery, namely socks and stockings; hosiery, namely, socks and stockings; knitwear clothing, namely sweaters, knitted underwear, and knit caps; sportswear, namely sports shirts, sport jerseys, sport pants; sportswear, namely, sports shirts, sport jerseys, sport pants; clothing accessories, namely suspenders, ties, bow ties, and scarves; belts for clothing; gloves; footwear and headgear; footwear and headwearClass 025 for Men's, women's and children's clothing, namely suits, coats, jackets, pants, shirts, raincoats, sweatsuits, underwear, pullovers, knit shirts, and under garments; evening wear, namely, evening dresses, evening gowns, evening wraps, tuxedos, blazers, and three-quarter coats; hosiery, namely, socks and stockings; knitwear clothing, namely sweaters, knitted underwear, and knit caps; sportswear, namely, sports shirts, sport jerseys, sport pants; clothing accessories, namely suspenders, ties, bow ties, and scarves; belts for clothing; gloves; footwear and headwear
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) 0766417 and 1208578.


Miscellaneous Statement
Applicant submits that "paper knives and cutters for office uses" are classified in International Class 16 in the Manual of Trademark Acceptable Identification of Goods & Services. Further and favorable action is respectfully requested.


SIGNATURE(S)
Request for Reconsideration Signature
Signature: /audra kemp/     Date: 10/14/2014
Signatory's Name: Audra Kemp
Signatory's Position: Associate Attorney, Collen IP, NY 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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 85973192
Internet Transmission Date: Tue Oct 14 15:37:36 EDT 2014
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XX-20141014153736316
015-85973192-500873221cbb2a3e06ca622cefc
78e11e07cd6e1f51f1c89ee4156bbe115e2a4-N/
A-N/A-20141014143422362060