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. 87587745 NOBLE(Standard Characters, see http://uspto.report/TM/87587745/mark.png) has been amended as follows:

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

The present application has been refused in view of the following trademark registrations:  3893653 (THE NOBLE COLLECTION), 5258500 (THE NOBLE HOUSE HOME FURNISHINGS and design), 5156690 (NOBLE BRANDS), 5287818 (NOBLE), and 5408233 (NOBLE CRAFT CABINETRY).

 

Applicant is amending the identification of services to avoid the alleged likelihood of confusion asserted by the Office.  Applicant is also reclassifying the identification of services, as previously required by the Office.  Applicant respectfully submits that a likelihood of confusion between the present application, as amended, and the cited registrations does not exist because there is no overlap or significant relationship between the respective goods and services.  The identification of services of the present application recites, after amendment:  “Building supply retail store services featuring raw building materials, lighting and electrical supplies, plumbing supplies, roofing materials, tools, outdoor power equipment, home safety and security items, and landscaping materials.”

 

Cited Reg. No. 3893653 (THE NOBLE COLLECTION) recites “On-line retail store services featuring collectables, movie collectables, movie prop replicas, high-end movie costumes and dress up apparel, electronic collectables related to movies, replica weapons, replica armory, jewelry, jewelry boxes, sculptures, housewares, furniture in the nature of display cases, mirrors, candle holders, incense burners, clothing, walking sticks, replica maps, ornaments, scales, clocks, business card cases, bookends, paperweights, bookmarks, stationery and stationery paraphernalia, writing instruments, letter openers, magnifying glasses, hour glasses, coins, non-electronic games, toys,” which do not encompass and are not related to Applicant’s services.  Similarly, Applicant’s services do not encompass and are not related to the services of Reg. No. 3893653.

 

Cited Reg. 5258500 (THE NOBLE HOUSE HOME FURNISHINGS and design) recites “On-line retail store services featuring furniture and home furnishings,” which do not encompass and are not related to Applicant’s services.  Similarly, Applicant’s services do not encompass and are not related to the services of Reg. No. 5258500.

 

Cited Reg. 5156690 (NOBLE BRANDS) recites “Accounting services, personnel management services and business management and consultation services all for franchise owners excluding franchise owners in the fields of chemicals, fuels, petrochemicals, clean fuels, metals, minerals, ores, aluminum, aluminate, agricultural, horticultural and forestry products, grains, cocoa, coffee and vessels,” which do not encompass and are not related to Applicant’s services.  Similarly, Applicant’s services do not encompass and are not related to the services of Reg. No. 5156690.

 

Cited Reg. 5287818 (NOBLE) recites “Heating installations, namely, heating boilers for hot water and hot water supply; combination heating boilers and water heaters,” which do not encompass and are not related to Applicant’s services.  Similarly, Applicant’s services do not encompass and are not related to the goods of Reg. No. 5287818.

 

Cited Reg. 5408233 (NOBLE CRAFT CABINETRY) recites “On-line wholesale store services featuring cabinets,” which does not encompass and is not related to Applicant’s services.  Similarly, Applicant’s services do not encompass and are not related to the services of Reg. No. 5408233.

 

Due to the non-overlap and non-relatedness of the respective goods and services, Applicant respectfully requests that the refusal under Section 2(d) be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Building supply retail store services featuring a variety of appliances, building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home furnishings, home improvement items, tools, outdoor power equipment, home safety and security items, and landscaping materials; construction consultation services for building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home improvement, home safety

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 042 ) for Building supply retail store services featuring raw building materials, lighting and electrical supplies, plumbing supplies, roofing materials, tools, outdoor power equipment, home safety and security items, and landscaping materials
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.

SIGNATURE(S)
Response Signature
Signature: /Giovanna H. Fessenden, Reg. No. 60,264/     Date: 09/13/2018
Signatory's Name: Giovanna H. Fessenden
Signatory's Position: Attorney of Record, Massachusetts Bar Member

Signatory's Phone Number: (978) 341-0036

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: 87587745
Internet Transmission Date: Thu Sep 13 19:16:21 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-201809131916211090
98-87587745-6109d7cb6595f5ca3dd17811e08c
9fc42983cf1054760de8ad7114c3f4d5f714-N/A
-N/A-20180913112232154654