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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87551203 PERFORMA(Standard Characters, see http://uspto.report/TM/87551203/mark.png) has been amended as follows:

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

The Examining Attorney has rejected registration of the mark PERFORMA in Class 21 on the grounds that this mark, when used on or in connection with the identified goods, so resembles the mark in Reg. No. 4030276 for PERFORMA for ?paper plates? in International Class 21, issued on September 27, 2011, as to be likely to cause confusion, mistake, or to deceive. For the reasons set forth below, Applicant believes that it is entitled to registration of its proposed mark PERFORMA. Applicant submits that there is no likelihood of confusion between its mark and the mark in the cited registration. Applicant's Class 21 goods as amended and the goods identified by the cited registration are distinct. See Mason. Au & Magenheimer Confectionery Company v. Loose-Wiles Biscuit Company, 15 U.S.P.Q. 220, 222 (E.D.N.Y. 1932) (Court determined that cookies and candy do not have the same distinctive properties, thus use of TRUMPS for cookies did not infringe TRUMPS for candy); H.P. Hood & Sons, Inc. v. United Biscuit Co. of America, 121 U.S.P.Q. 45, 46 (T.T.A.B. 1959) (PENGUIN for cookies not likely to be confused with GIANT PENGUIN for frozen ice cream confections; bakery goods and frozen confections pertain to unrelated fields of production, and are distributed and marketed under dissimilar conditions, even though they are frequently sold through the same retail food establishments). This case law leads to the conclusion that Applicant's amended Class 21 goods, namely, ?Kitchen containers; containers for personal household use for food, medications, vitamins and supplements, water and/or beverages, sold empty; Household containers for food, namely, containers to organize meals, sold empty; Thermal insulated containers for food which organize meals; Water bottle and sports bottle belts for fitness activities; Plastic water bottle holders and attached carabiner clip sold as a unit; Insulated bags for food or beverage for domestic use? are distinct from the goods sold under the cited registration. In addition, the Examiner?s evidence ?of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant? is not convincing. Most of those third-party registrations have been on the register for less than 5 years. Thus, Applicant respectfully disagrees that its goods and those identified by the cited registration are related and will travel in the same trade channels. In conclusion, Applicant respectfully requests that the Trademark Examining Attorney withdraw the objection to registration due to the differences between the goods. Such differences lead to the conclusion that there is no possibility of likelihood of confusion between Applicant?s mark and the mark of the cited registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Duffel bags; Tote bags; Wheeled bags; Athletic bags; Gym bags; drawstring bags; sport bags; Waist pouches, wearable strap on pouches, waist packs and fanny packs
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.

Proposed: Class 018 for Duffel bags; Tote bags; Wheeled bags; Athletic bags; Gym bags; drawstring bags; sport bags; Waist pouches, wearable strap on pouches, waist packs and fanny packs
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Kitchen containers; containers for personal household use for food, medications, vitamins and supplements, water and/or beverages, sold empty; Household containers for food, namely, containers to organize meals, sold empty; Thermal insulated containers for food which organize meals; Water bottle and sports bottle belts for fitness activities; Plastic water bottle holders and attached carabiner clip sold as a unit; Insulated bags for food or beverage
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Kitchen containers; containers for personal household use for food, medications, vitamins and supplements, water and/or beverages, sold empty; Household containers for food, namely, containers to organize meals, sold empty; Thermal insulated containers for food which organize meals; Water bottle and sports bottle belts for fitness activities; Plastic water bottle holders and attached carabiner clip sold as a unit; Insulated bags for food or beverage; Insulated bags for food or beverage for domestic useClass 021 for Kitchen containers; containers for personal household use for food, medications, vitamins and supplements, water and/or beverages, sold empty; Household containers for food, namely, containers to organize meals, sold empty; Thermal insulated containers for food which organize meals; Water bottle and sports bottle belts for fitness activities; Plastic water bottle holders and attached carabiner clip sold as a unit; Insulated bags for food or beverage for domestic use
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Weightlifting and fitness accessories, namely, lifting straps, weight belts, fitness bands, athletic tape, gloves, knee pads, foam mats, and rollers
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Weightlifting and fitness accessories, namely, lifting straps, weight belts, fitness bands, athletic tape, gloves, knee pads, foam mats, and rollers; Weightlifting and fitness accessories, namely, lifting straps, weight belts, fitness bands, athletic tape, gloves, knee pads, foam mats, and foam exercise rollers not for medical useClass 028 for Weightlifting and fitness accessories, namely, lifting straps, weight belts, fitness bands, athletic tape, gloves, knee pads, foam mats, and foam exercise rollers not for medical use
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 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /KL/     Date: 05/08/2018
Signatory's Name: Katrin Lewertoff
Signatory's Position: Attorney of record, NY bar member

Signatory's Phone Number: 203 557 4224

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: 87551203
Internet Transmission Date: Tue May 08 17:06:31 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2018050817063135
6151-87551203-610856791532d1f48ec5ae317c
9767e1e4b0d5f6d7bdf62b5e53b18c65bb719-N/
A-N/A-20180508165431459303