| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86802110 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/86802110/large |
| LITERAL ELEMENT | ION |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of ion in an orbit design. |
| ARGUMENT(S) | |
|
The Examining Attorney has required a disclaimer of the wording “ION” on the ground that it describes a feature, characteristic, function, quality, ingredient, purpose or use of applicant’s goods. Applicant respectfully traverses the Examining Attorney’s allegation of the descriptiveness of ION as used in Applicant’s Mark. As noted in Applicant’s previous response,the term ION in no way describes Applicant’s goods, which are “hair combs and brushes.” Rather, ION has no descriptive meaning in connection with the specific goods in the subject application.
Applicant further notes that Applicant’s identical ION and Design Mark has been registered on the Principal Register under Section 2(f) for goods related to the goods in the subject application (Registration No. 5015383, registered for “Electric irons for styling hair; deep waver hair irons; Hair dryers; hair dryer attachments, namely, hair piks and diffusers; Electric hair rollers”). As stated in TMEP 1212, prior registrations may be used to establish acquired distinctiveness under §2(f). Specifically, according to TMEP 1212.04, “Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), provides that …. prima facie evidence of acquired distinctiveness [can be proven by] ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905.” Applicant has added a claim of ownership for Reg. No. 5015383 to the record and respectfully submits that this claim is sufficient for the application to proceed under Section 2(f), in the event that the Examiner maintains her refusal to on the basis that the mark is inherently distinctive.
In light of the above, Applicant respectfully submits that the subject application is entitled to registration on the Principal Register under §2(f), and respectfully requests publication in the Official Gazette of the Trademark Office. |
|
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of active prior U.S. Registration Number(s) 5015383. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Janice Housey/ |
| SIGNATORY'S NAME | Janice Housey |
| SIGNATORY'S POSITION | Attorney for Applicant, VA Bar Member |
| DATE SIGNED | 08/17/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 17 21:08:55 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20160817210855058964-8680 2110-5503ae4c9948b9ee86c6 41b8bcf7998676e4a373e4669 ac426199c9d3478fcc42-N/A- N/A-20160815084432544913 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
The Examining Attorney has required a disclaimer of the wording “ION” on the ground that it describes a feature, characteristic, function, quality, ingredient, purpose or use of applicant’s goods. Applicant respectfully traverses the Examining Attorney’s allegation of the descriptiveness of ION as used in Applicant’s Mark. As noted in Applicant’s previous response,the term ION in no way describes Applicant’s goods, which are “hair combs and brushes.” Rather, ION has no descriptive meaning in connection with the specific goods in the subject application.
Applicant further notes that Applicant’s identical ION and Design Mark has been registered on the Principal Register under Section 2(f) for goods related to the goods in the subject application (Registration No. 5015383, registered for “Electric irons for styling hair; deep waver hair irons; Hair dryers; hair dryer attachments, namely, hair piks and diffusers; Electric hair rollers”). As stated in TMEP 1212, prior registrations may be used to establish acquired distinctiveness under §2(f). Specifically, according to TMEP 1212.04, “Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), provides that …. prima facie evidence of acquired distinctiveness [can be proven by] ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905.” Applicant has added a claim of ownership for Reg. No. 5015383 to the record and respectfully submits that this claim is sufficient for the application to proceed under Section 2(f), in the event that the Examiner maintains her refusal to on the basis that the mark is inherently distinctive.
In light of the above, Applicant respectfully submits that the subject application is entitled to registration on the Principal Register under §2(f), and respectfully requests publication in the Official Gazette of the Trademark Office.