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. 87728638 ON THE GO(Standard Characters, see http://uspto.report/TM/87728638/mark.png) has been amended as follows:

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

THORPE NORTH & WESTERN, LLP

Customer No. 20,551

P.O. Box 1219

Sandy, Utah 84091-1219

 

 

 

RESPONSE UNDER 37 C.F.R. § 2.62

 

 

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

 

 

Dear Sir:

 

In response to the Office Action mailed on April 2, 2018, the Applicant offers the following remarks and requests further consideration under 37 C.F.R. § 2.62.

 

 

 

REMARKS

15 U.S.C. §1052 - Likelihood of Confusion

         The Examiner rejected registration of the application for “ON THE GO” Ser. No. 87/728,638 (hereinafter “Applied for Mark”) to On the Go Products Co. (hereinafter “Applicant”) on the basis of likelihood of confusion with the registered trademark "ON THE GO" prior Reg. No. 4,069,071 (hereinafter “‘071 Reg.”) to Ole Henriksen of Denmark, Inc. (hereinafter “Prior Registrant”). Between the mailing date of the office action and the date of this response, the ‘071 Reg. was canceled. See attached TSDR status. Accordingly, likelihood of confusion between the Applied for Mark and the prior ‘071 Reg. is no longer an issue.

 

Identification of Goods

            In the Office Action, the Examiner found the identification of goods to be improper under TMEP § 1402.01. Attorneys for the Applicant discussed proposed amendments to the goods identified in a related application during a telephone interview with the Examiner in April 2018 and requests the same amendments in this application. Please amend the pending goods and services description as indicated below.

 

Class 3 - Kits for personal hygiene, namely, comprising wet wipes being wipes impregnated with cleansing compounds for personal hygiene and dry wipes being disposable wipes not impregnated with chemicals or compounds and wet wipes.

 

Class 16 - Kits for personal hygiene, namely, comprising dry wipes being disposable wipes not impregnated with chemicals or compounds and wet wipes being wipes impregnated with cleansing compounds for personal hygiene.

 

 

Specify Number of Classes for Which Registration is sought

            In the Office Action, the Examiner indicated that the application contains goods that may be registered in three classes (3, 5, and 16). The pending application presently includes goods in classes 3 and 16. Class 5 is for pharmaceuticals and includes medicated wipes. At this time, the Applicant’s product does not include medicated wipes and the Applicant does not wish to amend the application to include goods within class 5. Therefore, registration is sought only in international classes 3 and 16.

 

Multiple Class Application

            In the Office Action, the Examiner indicated that the pending application is based on goods that fall within multiple-classes and indicated the multiple class application requirements. The filed application satisfied the multiple class application requirements for each international class and included (1) the list of goods and services by international class number, (2) a filing fee for international classes 3 and 16, (3) verified dates of first use in commerce for international classes 3 and 16, (4) a specimen that has been deemed acceptable for classes 3 and 16, and (5) a signed statement of use indicating that the goods have been sold in connection with the applied for mark since at least as early February 10, 2017. Accordingly, the pending application meets all of the multiple class application requirements. If the Examiner needs any additional materials, it is requested that the Examiner contact Alicia Lewis at (801) 566-6633 to clarify this request.

 

CONCLUSION

In light of the above, it is respectfully requested that the Examiner's rejections be withdrawn and the Applied for Mark be allowed. If any impediment to the allowance remains, the Examiner is encouraged to call Alicia Lewis at (801) 566-6633 so that such matters may be resolved as expeditiously as possible.

 

DATED this 2nd day of October, 2018.

 

 

Respectfully submitted,

 

                                                                       

            /Alicia M. Lewis/

 

                                                                        Alicia M. Lewis, Esq.                                                                                                                         Attorney for Applicant

 

THORPE NORTH & WESTERN, LLP

Customer No. 20,551

P.O. Box 1219

Sandy, Utah 84091-1219

Telephone: (801) 566-6633

EVIDENCE

Original PDF file:
evi_50243111-20181002184106775444_._Reg._No._4069071.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

SIGNATURE(S)
Response Signature
Signature: /Alicia M. Lewis/     Date: 10/02/2018
Signatory's Name: Alicia Lewis
Signatory's Position: Attorney of Record, Utah Bar Member 15,298

Signatory's Phone Number: 801-566-6633

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: 87728638
Internet Transmission Date: Tue Oct 02 18:54:14 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201810021854141465
12-87728638-610e368612c9930fd1dbeeea64fe
580368878bd83c1d5d5913a5024e0e6fd794df2-
N/A-N/A-20181002184106775444