TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88048274 PANTHEON(Standard Characters, see http://uspto.report/TM/88048274/mark.png) has been amended as follows:

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

The Registrant and Applicant have entered into a consent agreement, whereby they agree that there is no likelihood of confusion between the marks for the reasons stated. As such, this weighs against any likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 111 USPQ 563, 568 (CCPA 1973). Moreover, where, as here, a consent agreement demonstrates that "competitors have clearly thought out their commercial interests," this "should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason ...." In re American Cruise Lines, Inc., Serial No. 87040022 (TTAB Oct. 3, 2018). Moreover, the parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future. This further militates against any confusion. See In re Four Seasons Hotels, Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993). Accordingly, Applicant respectfully submits that there is no likelihood of confusion between Applicant's mark and Registrant's mark. Applicant requests that the refusal based on the Registrant's mark be withdrawn.

EVIDENCE
Evidence in the nature of Consent Agreement has been attached.
Original PDF file:
evi_833752-20191115102925150107_._Trademark_Consent_Agreement_by_and_between.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for On-line retail store services featuring a wide variety of consumer goods of others
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 05/05/2016 and first used in commerce at least as early as 05/05/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring a wide variety of consumer goods of others, namely, smart watch accessories, watch bands, baby accessories, cell phone accessories, diaper bags, changing pads, toys, luggage, and luggage accessories, and specifically excluding watches, jewelry or watch bands, except for watch bands having a retail price less than $100.Class 035 for On-line retail store services featuring a wide variety of consumer goods of others, namely, smart watch accessories, watch bands, baby accessories, cell phone accessories, diaper bags, changing pads, toys, luggage, and luggage accessories, and specifically excluding watches, jewelry or watch bands, except for watch bands having a retail price less than $100.
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 05/05/2016 and first used in commerce at least as early as 05/05/2016 , and is now in use in such commerce.
The applicant's current attorney information: Joseph M. Kuo. Joseph M. Kuo of SAUL EWING ARNSTEIN & LEHR LLP, is located at

      161 NORTH CLARK STREET, SUITE 4200
      CHICAGO, Illinois 60601
      US

The phone number is 312-876-7151.

The fax number is 312-876-0288.

The email address is joseph.kuo@saul.com

The applicants proposed attorney information: Joseph M. Kuo. Joseph M. Kuo of SAUL EWING ARNSTEIN & LEHR LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      161 NORTH CLARK STREET, SUITE 4200
      CHICAGO, Illinois 60601
      United States

The phone number is 312-876-7151.

The fax number is 312-876-0288.

The email address is joseph.kuo@saul.com

Joseph M. Kuo submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JOSEPH M. KUO. JOSEPH M. KUO of SAUL EWING ARNSTEIN & LEHR LLP, is located at

      161 NORTH CLARK STREET, SUITE 4200
      CHICAGO, Illinois 60601
      US

The phone number is 312-876-7151.

The fax number is 312-876-0288.

The email address is joseph.kuo@saul.com; laura.disanto@saul.com

The applicants proposed correspondence information: Joseph M. Kuo. Joseph M. Kuo of SAUL EWING ARNSTEIN & LEHR LLP, is located at

      161 NORTH CLARK STREET, SUITE 4200
      CHICAGO, Illinois 60601
      United States

The phone number is 312-876-7151.

The fax number is 312-876-0288.

The email address is joseph.kuo@saul.com; laura.disanto@saul.com; trademarks@saul.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Joseph M Kuo/     Date: 11/15/2019
Signatory's Name: Joseph M Kuo
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-876-7151

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    JOSEPH M. KUO
   SAUL EWING ARNSTEIN & LEHR LLP
   
   161 NORTH CLARK STREET, SUITE 4200
   CHICAGO, Illinois 60601
Mailing Address:    Joseph M. Kuo
   SAUL EWING ARNSTEIN & LEHR LLP
   161 NORTH CLARK STREET, SUITE 4200
   CHICAGO, Illinois 60601
        
Serial Number: 88048274
Internet Transmission Date: Fri Nov 15 10:41:39 EST 2019
TEAS Stamp: USPTO/RFR-X.XX.XX.X-20191115104139747639
-88048274-7005cc2e3a4dbcf129bff10c785e65
b833ad7b3f3977d3c5edd89783a7dd0e663-N/A-
N/A-20191115102925150107