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. 87110839 IDENTIC(Standard Characters, see http://uspto.report/TM/87110839/mark.png) has been amended as follows:

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

The following amendments and remarks are submitted in response to the Office Action dated November 4, 2016. 

 

Applicant notes that a search of the U.S. Patent and Trademark Office records did not reveal any pending or registered mark which would bar registration under Section 2(d) of the Trademark Act.

 

Identification of Goods

 

The Examining Attorney requested amendments to the identification of goods.  As set forth above, Applicant has amended the identification of goods as suggested by the Examining Attorney and in accordance with the Manual of Acceptable Identification of Goods and Services. 

 

Foreign Registration

 

Attached is a copy of the German registration certificate and English translation.

 

Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned at Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth floor, Irvine, California 92614.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for handbags for ladies, clutch bags, evening bags, handbags for men, purses, wallets, reusable shopping bags, carry-all bags, holdalls, travelling bags, weekend bags, sports bags, back packs, key bags, beach bags, wash bags for carrying toiletries, make-up bags sold empty; credit card cases and holders; briefcases for documents; business cases; business card cases; suit bags; umbrellas; shoulder bags; messenger bags, belt bags
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Germany registration number 30034458 registered 08/21/2000 with a renewal date of 04/20/2010 and an expiration date of 05/31/2020 ], 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: Class 018 for handbags for ladies, clutch bags, evening bags, handbags for men, purses, wallets, reusable shopping bags, carry-all bags, holdalls, travelling bags, weekend bags, sports bags, back packs, key bags, beach bags, wash bags for carrying toiletries, make-up bags sold empty; credit card cases and holders; briefcases for documents; business cases; business card cases; suit bags; umbrellas; shoulder bags; messenger bags, belt bags
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 30034458 registered 08/21/2000 with a renewal date of 04/20/2010 and an expiration date of 05/31/2020 ], 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.
Original PDF file:
FRU0-1732271993-133233315_._class_18.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for shirts; t-shirts; polo shirts; vests; blouses; blazers; dresses; suits; cardigans; pullovers; ponchos; sweat shirts; tank-tops; tops (clothing); leather jackets; mantles (clothing); coats (clothing); jackets (clothing); trousers; jeans; shorts; capris; bermuda shorts; skirts; socks and stockings; leggings; tights; knee-high stockings; leg warmers; pantyhose; undershirts; boxer shorts; underpants; slips; g-strings; brassieres; sports bras; bodies (undergarments); pajamas; sleeping garments; sleep shirts; pajama bottoms; nightdresses; thermal underwear, padded underwear; hats; caps, bonnets (headwear); shoes; boots; sandals and beach shoes; mules; slippers; flip flops (footwear); sneakers, sport shoes, clogs, bathing slippers; bikinis; tankinis; bathing suits; swimming trunks; swimming shorts; bathrobes; pareos; bathing caps; sports shirts; track suits; training suits; jogging suits; sweat pants; sports jackets; skiwear; sports tops, sports pants; infinity scarves; scarves; cravats; gloves; belts (clothing); ties (clothing); bandanas; braces; romper suits, babysuits, babygros, sleeping bags for babies and infants, romper bags, bibs made of textile material
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Germany registration number 39847436 registered 11/30/1998 with a renewal date of 06/07/2008 and an expiration date of 08/31/2018 ], 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: Shirts; t-shirts; polo shirts; vests; blouses; blazers; dresses; suits; cardigans; pullovers; ponchos; sweat shirts; tank-tops; tops (clothing); tops; leather jackets; mantles (clothing); mantles; coats (clothing); coats; jackets (clothing); jackets; trousers; jeans; shorts; capris; bermuda shorts; skirts; socks and stockings; leggings; tights; knee-high stockings; leg warmers; pantyhose; undershirts; boxer shorts; underpants; slips; g-strings; brassieres; sports bras; bodies (undergarments); bodies namely, bodysuits, one-piece garment for women; pajamas; sleeping garments; sleep shirts; pajama bottoms; nightdresses; thermal underwear, padded underwear; hats; caps, bonnets (headwear); caps, bonnets; shoes; boots; sandals and beach shoes; mules; slippers; flip flops (footwear); flip flops; sneakers, sport shoes, clogs, bathing slippers; bikinis; tankinis; bathing suits; swimming trunks; swimming shorts; bathrobes; pareos; bathing caps; sports shirts; track suits; training suits; jogging suits; sweat pants; sports jackets; skiwear; sports tops, sports pants; infinity scarves; scarves; cravats; gloves; belts (clothing); belts; ties (clothing); ties; bandanas; braces; romper suits, babysuits, babygros, sleeping bags for babies and infants, romper bags, bibs made of textile material; romper suits, baby suits, babygros, namely, one piece garment for infants, toddlers and children; children's and infant's apparel, namely, rompers; bibs made of textile materialClass 025 for Shirts; t-shirts; polo shirts; vests; blouses; blazers; dresses; suits; cardigans; pullovers; ponchos; sweat shirts; tank-tops; tops; leather jackets; mantles; coats ; jackets; trousers; jeans; shorts; capris; bermuda shorts; skirts; socks and stockings; leggings; tights; knee-high stockings; leg warmers; pantyhose; undershirts; boxer shorts; underpants; slips; g-strings; brassieres; sports bras; bodies namely, bodysuits, one-piece garment for women; pajamas; sleeping garments; sleep shirts; pajama bottoms; nightdresses; thermal underwear, padded underwear; hats; caps, bonnets; shoes; boots; sandals and beach shoes; mules; slippers; flip flops; sneakers, sport shoes, clogs, bathing slippers; bikinis; tankinis; bathing suits; swimming trunks; swimming shorts; bathrobes; pareos; bathing caps; sports shirts; track suits; training suits; jogging suits; sweat pants; sports jackets; skiwear; sports tops, sports pants; infinity scarves; scarves; cravats; gloves; belts; ties; bandanas; braces; romper suits, baby suits, babygros, namely, one piece garment for infants, toddlers and children; children's and infant's apparel, namely, rompers; bibs made of textile material
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 39847436 registered 11/30/1998 with a renewal date of 06/07/2008 and an expiration date of 08/31/2018 ], 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.
Original PDF file:
FRU1-1732271993-133233315_._class_25.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1732271993-133233315_._identic_signed_app.pdf
Converted PDF file(s) (4 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signatory's Name: Rainer Kanbach
Signatory's Position: CPO

Response Signature
Signature: /Andrew H. Simpson/     Date: 02/03/2017
Signatory's Name: Andrew H. Simpson
Signatory's Position: Attorney for Applicant, California bar member

Signatory's Phone Number: 949-760-0404

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.

        
Serial Number: 87110839
Internet Transmission Date: Fri Feb 03 17:00:50 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2017020317005075
8821-87110839-58016a040228cce7fae44f2602
961ee7af775f003d8f132e53dd9734389519695-
N/A-N/A-20170203133233315900