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. 87942097 RENEW(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87942097/large) has been amended as follows:

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

In a September 28, 2018 Office Action, the Examining Attorney partially refused registration of this application under Section 2(d) based on US Reg. No. 4506873 for the mark RENEW in Class 25 owned by Venture Products, LLC.  In light of the amendments to the Class 25 goods in this response, Applicant believes there is no confusion with US Reg. No. 4506873 and respectfully requests that the partial refusal be withdrawn and the application proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Fabrics; Fabrics for textile use; Textile fabrics for use in the manufacture of clothing and accessories; Wool, cotton, triacetate, silk, cupro, nylon, plastic, and lycra fabric for use as a textile in the manufacture of clothing and accessories; Wrinkle resistant fabrics
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Fabrics; Fabrics for textile use; textile fabrics for use in the manufacture of clothing and accessories; wool, cotton, triacetate, silk, cupro, nylon, plastic, and synthetic fiber fabric for use as a textile in the manufacture of clothing and accessories; Wool, cotton, triacetate, silk, cupro, nylon, plastic, and lycra fabric for use as a textile in the manufacture of clothing and accessories; fabrics for textile use, namely, wrinkle resistant fabrics; Wrinkle resistant fabricsClass 024 for Fabrics for textile use; textile fabrics for use in the manufacture of clothing and accessories; wool, cotton, triacetate, silk, cupro, nylon, plastic, and synthetic fiber fabric for use as a textile in the manufacture of clothing and accessories; fabrics for textile use, namely, wrinkle resistant fabrics
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing; Clothing, namely, outerwear, parkas, shirts, t-shirts, polo shirts, button down shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, coats, belts, jeans, pants, baby tees, tops, dresses, blouses, skirts, thermal shirts, shorts, socks, suits, ties, robes, swimwear, rainwear, sleepwear, scarves, beanies, hats, and caps; Footwear, namely, shoes and boots
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Clothing; Clothing, namely, outerwear, parkas, shirts, t-shirts, polo shirts, button down shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, coats, belts, jeans, pants, baby tee shirts, tops, dresses, blouses, skirts, thermal shirts, shorts, suits, ties, robes, swimwear, rainwear, sleepwear, scarves, beanies, hats, and caps being headwear, excluding gloves and socks; Clothing, namely, outerwear, parkas, shirts, t-shirts, polo shirts, button down shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, coats, belts, jeans, pants, baby tees, tops, dresses, blouses, skirts, thermal shirts, shorts, socks, suits, ties, robes, swimwear, rainwear, sleepwear, scarves, beanies, hats, and caps; footwear, namely, shoes and bootsClass 025 for Clothing, namely, outerwear, parkas, shirts, t-shirts, polo shirts, button down shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, coats, belts, jeans, pants, baby tee shirts, tops, dresses, blouses, skirts, thermal shirts, shorts, suits, ties, robes, swimwear, rainwear, sleepwear, scarves, beanies, hats, and caps being headwear, excluding gloves and socks; footwear, namely, shoes and boots
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail store and on-line retail store services; Retail store and on-line retail store services featuring clothing, outerwear, accessories, footwear, bags, leather goods, sunglasses, fragrances, towels, blankets, electronics accessories, jewelry, and watches
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Retail store and on-line retail store services; Retail store and on-line retail store services featuring clothing, outerwear, accessories, footwear, bags, leather goods, sunglasses, fragrances, towels, blankets, electronics accessories, jewelry, and watchesClass 035 for Retail store and on-line retail store services featuring clothing, outerwear, accessories, footwear, bags, leather goods, sunglasses, fragrances, towels, blankets, electronics accessories, jewelry, and watches
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: /kaw/     Date: 03/01/2019
Signatory's Name: Karen A. Webb
Signatory's Position: Attorney of Record, California bar member

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: 87942097
Internet Transmission Date: Fri Mar 01 14:18:36 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20190301141836106
983-87942097-620b79d7aaa56efe54fdf32e539
7bad46b95ac552d77f7357ae5ed074defa68471-
N/A-N/A-20190301130737352203