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. 88049284 TALLMENSHOES.COM(Standard Characters, see http://uspto.report/TM/88049284/mark.png) has been amended as follows:

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

We submit to you that the applicant's proposed mark should not be denied for Section 2(e)(1) Merely Descriptive Words. The reasons are as the following:

We would totally agree with you that the “tall men shoes” are merely descriptive words if the words merely describe the goods that are offered to sell, e.g. the shoes for tall men. However, applicant's online specialty store sell exclusively “elevator shoes” and targets short men. The tallmenshoes are only used as a metaphor, meaning the shoes will make the short men look taller. Applicant's shoes do not target tall men.

The Applicant has been selling this type of “elevator shoes for men" for over 20 years and they have a registered trademark CALTO (Reg No. 4889405), which is for this type of shoes listed on their website. The domain name tallmenshoes.com has been used by applicant for over 20 years as well. It indeed achieves a distinctiveness in its own way.

We are  attaching an email from my client who gave an explanation to your question whether their mark should be considered as descriptive words, and also a screenshot from the tallmenshoes.com indicating that their shoes are for  “men's height increasing elevator shoes.”

Therefore, the tallmenshoes.com is not merely descriptive words for the services that applicant wishes to trademark.

 In addition, applicant responds to the examiner's five questions:

1. Do any of applicant’s retail store services feature or otherwise sell shoes for tall men? Answer: No.
2.  Is “tall men shoes” or “tall men’s shoes” a category of goods that may be found within applicant’s online retail store?    Answer:         NO.
3.   Is “tall men shoes” or “tall men’s shoes” a category of goods that may be found within any retail establishment that sells footwear? Answer:        Answer: No, tot that I know of.
4.   Is “tall men shoes,” “tall men’s shoes,” or “shoes for tall men” a recognized category of goods in the footwear industry? Answer: Big size shoes yes. Typically people don’t say “Tall Men’s Shoes.
5. Does the wording “tall men shoes” have any other meaning in relation to applicant’s identified service? Answer: No, it is only used as a metaphor to make short men taller.

EVIDENCE

JPG file(s):
Evidence-1
Evidence-2
Original PDF file:
evi_6621583114-20190130193440167765_._Michael_s_explaination.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

SIGNATURE(S)
Response Signature
Signature: /hbj/     Date: 01/30/2019
Signatory's Name: Helen B. Jiang
Signatory's Position: Attorney of Record

Signatory's Phone Number: 6262866558

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: 88049284
Internet Transmission Date: Wed Jan 30 19:42:42 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019013019424231
1746-88049284-62025367c28e7b4385feeb5fb4
b46339ff464eed6f246995383784b6f0f6eaf242
-N/A-N/A-20190130193440167765