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 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87526154 |
LAW OFFICE ASSIGNED |
LAW OFFICE 102 |
MARK SECTION |
MARK |
http://uspto.report/TM/87526154/mark.png |
LITERAL ELEMENT |
GARRETT |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Applicant has removed its entire goods under International Class 18 which is believed to be the cause of Likelihood of Confusion with the Cited
marks, to obviate Likelihood of Confusion. |
GOODS AND/OR SERVICES SECTION (003)(current) |
INTERNATIONAL CLASS |
003 |
DESCRIPTION |
Perfumery; essential oils; cosmetics; make-up; eye make-up; eyeliners; blushers; lipsticks; hair lotions; soaps |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
GOODS AND/OR SERVICES SECTION (003)(proposed) |
INTERNATIONAL CLASS |
003 |
TRACKED TEXT DESCRIPTION |
Perfumery; essential oils; Essential oils
for personal use; cosmetics; Cosmetics and make-up; make-up; Eye make-up; Eyeliners; Blushers; Lipsticks; Hair lotions; Non-medicated soaps for hands, face and body; soaps |
FINAL DESCRIPTION |
Perfumery; Essential oils for personal use; Cosmetics and make-up; Eye make-up; Eyeliners; Blushers; Lipsticks; Hair lotions;
Non-medicated soaps for hands, face and body |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (018)(class deleted) |
GOODS AND/OR SERVICES SECTION (020)(current) |
INTERNATIONAL CLASS |
020 |
DESCRIPTION |
Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
GOODS AND/OR SERVICES SECTION (020)(proposed) |
INTERNATIONAL CLASS |
020 |
DESCRIPTION |
Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (025)(current) |
INTERNATIONAL CLASS |
025 |
DESCRIPTION |
Clothing; footwear; headgear; swimwear; sportswear; leisurewear |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
GOODS AND/OR SERVICES SECTION (025)(proposed) |
INTERNATIONAL CLASS |
025 |
TRACKED TEXT DESCRIPTION |
Clothing; Clothing, namely, shirts, pants, coats, dresses, tops and
bottoms; footwear; headgear; headwear; swimwear; sportswear; sportswear, namely, athletic shorts, athletic pants, athletic shirts, athletic uniforms; leisurewear; leisurewear, namely, robes, night gowns, leisure suits, leisure shoes, loungewear |
FINAL DESCRIPTION |
Clothing, namely, shirts, pants, coats, dresses, tops and bottoms; footwear; headwear; swimwear; sportswear, namely, athletic shorts,
athletic pants, athletic shirts, athletic uniforms; leisurewear, namely, robes, night gowns, leisure suits, leisure shoes, loungewear |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1346707 |
FOREIGN APPLICATION COUNTRY |
Benelux |
FOREIGN FILING DATE |
01/17/2017 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. The application should not be suspended to await the submission of the foreign registration. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/ Jonathan G. Morton / |
SIGNATORY'S NAME |
Jonathan G. Morton |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
212-666-5000 |
DATE SIGNED |
03/22/2018 |
RESPONSE SIGNATURE |
/ Jonathan G. Morton / |
SIGNATORY'S NAME |
Jonathan G. Morton |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
212-666-5000 |
DATE SIGNED |
03/22/2018 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Mar 22 22:47:48 EDT 2018 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20180322224748501379-875
26154-510cfb3d1e2596a399d
824fa38387bc8b4bdcfc5f4bd
d8eb7c7e44b88bd8811bcd-N/
A-N/A-2018032222403585688
1 |
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 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
87526154 GARRETT(Standard Characters, see http://uspto.report/TM/87526154/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Applicant has removed its entire goods under International Class 18 which is believed to be the cause of Likelihood of Confusion with the Cited marks, to obviate Likelihood of Confusion.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 018 for Leather; trunks and suitcases; travelling cases; handbags; purses; wallets; umbrellas; parasols; walking sticks; whips; harness; saddlery
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Perfumery; essential oils; cosmetics; make-up; eye make-up; eyeliners; blushers; lipsticks; hair lotions; soaps
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Perfumery;
essential oils;
Essential oils for personal use;
cosmetics;
Cosmetics and make-up;
make-up;
Eye make-up;
Eyeliners;
Blushers;
Lipsticks;
Hair lotions;
Non-medicated
soaps for hands, face and body;
soapsClass 003 for Perfumery; Essential oils for personal use; Cosmetics and make-up; Eye make-up; Eyeliners; Blushers;
Lipsticks; Hair lotions; Non-medicated soaps for hands, face and body
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should
not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section 1126(d), as amended.
Proposed: Class 020 for Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should
not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing; footwear; headgear; swimwear; sportswear; leisurewear
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Clothing;
Clothing, namely, shirts, pants, coats, dresses, tops and bottoms;
footwear;
headgear;
headwear;
swimwear;
sportswear;
sportswear, namely, athletic shorts, athletic pants, athletic shirts, athletic uniforms;
leisurewear;
leisurewear, namely, robes, night gowns, leisure suits, leisure shoes, loungewearClass 025 for Clothing, namely, shirts, pants,
coats, dresses, tops and bottoms; footwear; headwear; swimwear; sportswear, namely, athletic shorts, athletic pants, athletic shirts, athletic uniforms; leisurewear, namely, robes, night gowns,
leisure suits, leisure shoes, loungewear
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Benelux application number 1346707 filed 01/17/2017]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should
not be suspended to await the submission of the foreign registration.
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: / Jonathan G. Morton / Date: 03/22/2018
Signatory's Name: Jonathan G. Morton
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 212-666-5000
Response Signature
Signature: / Jonathan G. Morton / Date: 03/22/2018
Signatory's Name: Jonathan G. Morton
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 212-666-5000
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: 87526154
Internet Transmission Date: Thu Mar 22 22:47:48 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180322224748
501379-87526154-510cfb3d1e2596a399d824fa
38387bc8b4bdcfc5f4bdd8eb7c7e44b88bd8811b
cd-N/A-N/A-20180322224035856881