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. 86108253 RETAIN (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=86108253) has been amended as follows:

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

The Examining Attorney has cited pending Application Serial No. 86055906 for the trademark RETAINLY on the basis of a potential likelihood of confusion refusal.  The Applicant submits that the amended identification of services submitted herewith sufficiently differentiates the respective trademarks.  Therefore, it is believed that any potential likelihood of confusion conflict has been obviated.  Withdrawal of the potential likelihood of confusion refusal based on the cited '906 application is respectfully requested. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Helping businesses retain their customer loyalty
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 11/30/2011 and first used in commerce at least as early as 11/30/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Helping businesses retain their customer loyalty; helping businesses retain their customer loyalty, namely, customer loyalty services for commercial and advertising purposes featuring the use of personalized and customized gifts and featuring the use of print media for advertising purposesClass 035 for helping businesses retain their customer loyalty, namely, customer loyalty services for commercial and advertising purposes featuring the use of personalized and customized gifts and featuring the use of print media for advertising purposes
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 04/00/2013 and first used in commerce at least as early as 04/00/2013 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Description of mark
The mark consists of the design of a broken circle with the lower left portion comprising an arrow design. To the right of the design is the stylized word "Retain".

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /sean f. mellino/      Date: 02/21/2014
Signatory's Name: sean f. mellino
Signatory's Position: attorney of record OH bar member
Signatory's Phone Number: 216-771-3800


Response Signature
Signature: /sean f. mellino/     Date: 02/21/2014
Signatory's Name: sean f. mellino
Signatory's Position: attorney of recor - OH bar member

Signatory's Phone Number: 216-771-3800

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: 86108253
Internet Transmission Date: Fri Feb 21 16:08:43 EST 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201402211608439
10622-86108253-5009d468995341df2b361b6ca
ac4d0508b4c553de6d92af5f262983d7696295f-
N/A-N/A-20140221155527698474