Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86949927 PROFILE(Standard Characters, see http://uspto.report/TM/86949927/mark.png) has been amended as follows:

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

Section 2(e)(1) Refusal – Merely Descriptive / Supplemental Register

 

The Examining Attorney has refused registration of the PROFILE mark on the Principal Register on the ground that when the mark is used in connection with Applicant’s goods, the mark is merely descriptive. While Applicant does not agree with the refusal, Applicant is amending the present application to seek registration of the mark on the Supplemental Register in order to facilitate this matter. On December 8, 2016, Applicant separately filed an Amendment to Allege Use to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce. Accordingly, Applicant respectfully requests that the PROFILE mark be registered on the Supplemental Register.

 

Information about Goods

 

In response to the Examining Attorney’s inquiry (1), attached is an advertisement (sell sheet) relating to the goods under the PROFILE mark.  In response to the Examining Attorney's inquiry (2), Applicant confirms that the goods are capable of being used to shape, adjust, contour, or otherwise affect the outline or profile of a person's face or nose.

 

Amendment to Identification of Goods

 

The identification of goods have been amended herein.

EVIDENCE
Evidence in the nature of an advertisement (sell sheet) relating to the goods under the PROFILE mark. has been attached.
Original PDF file:
evi_1982101522-20161212112113825862_._Profile_SS_Final_Oct2016.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Costal cartilage implants for use in rhinoplasty
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: Costal cartilage implants for use in rhinoplasty; Costal cartilage implants derived from living tissue for use in rhinoplastyClass 005 for Costal cartilage implants derived from living tissue for use in rhinoplasty
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.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
JOSEPH AGOSTINO
GREENBERG TRAURIG, LLP
500 CAMPUS DRIVE
FLORHAM PARK
New Jersey
US
07932

Proposed:
JOSEPH AGOSTINO of GREENBERG TRAURIG, LLP, having an address of
500 CAMPUS DRIVE FLORHAM PARK, New Jersey 07932
United States
njdocket@gtlaw.com;agostinoj@gtlaw.com;hostetlerr@gtlaw.com;ameliom@gtlaw.com
973.443.3572
973.295.1292
The docket/reference number is 103248.04170 .



ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Joseph Agostino/      Date: 12/12/2016
Signatory's Name: Joseph Agostino
Signatory's Position: Attorney of record, New Jersey bar member
Signatory's Phone Number: 973.443.3572


Response Signature
Signature: /Joseph Agostino/     Date: 12/12/2016
Signatory's Name: Joseph Agostino
Signatory's Position: Attorney of record, New Jersey bar member

Signatory's Phone Number: 973.443.3572

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

Mailing Address:    JOSEPH AGOSTINO
   GREENBERG TRAURIG, LLP
   500 CAMPUS DRIVE
   FLORHAM PARK, New Jersey 07932
        
Serial Number: 86949927
Internet Transmission Date: Mon Dec 12 14:02:29 EST 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2016121214022985
6023-86949927-57042fbc921da319fcc1367152
eeb46c9bd692f91549f542a1b52d0cd41be-N/A-
N/A-20161212112113825862