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. 88092681 TOFINE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8809268 1/large) has been amended as follows:

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

ear examiner:Registration of the applied-for mark("TOFIEN" , U.S. Registration No. 88092681) is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5803427. According to your refusal, we make explanation as below:1) "TOFIEN" we applied belongs to products of Class 18, while “Toofine” belongs to Class 14. The two trademark applications are completely in different fields. Therefore there is no conflict, and it will not confuse consumers. Wearing a watch of Toofine, customers will not associate it with TOFIEN’s backpack, because they are different products. And the English letters and pattern designs of these two applications are totally different. Although "TOFIEN" and "Toofine" are different from each other by the letter “O”, the design styles of the two applications different, and the standard samples are carefully designed.2) The earliest application time of the "TOFIEN" we applied is prior to "Toofine" application. As shown in the atached table, the applicant submitted the "TOFIEN" US trademark application in July 2017. By that time, our trademark application has passed the preliminary examining. During the time of Publication, a notice of opposition was raised, and we missed the time for response, which led to the trademark invalidation and a heavy loss.3, The reason we choose TOFIEN as our trademark application mark is because of the Chinese meaning of “TUOFENG” which is the trade name of our company. In order to make consumers remember both our company and the brand, we chose TOFIEN as our trademark application.4, In 2018, our company reapplied for this trademark, and applied for use in multiple countries, such as the European Union, Japan, Russia, Australia, Mexico, the United Kingdom. We have obtained trademark registration certificates in all these regions. In terms of business, we have used this mark in a wide range. We have invested a lot of time and money to promote and publicize our products and our company's mark TOFIEN. At the same time, with years of mass production and sales in the market, we have certain inventory in stock. Our customers highly recognize the quality of our products, and they know our company well, which is the property of our company.

EVIDENCE
Evidence has been attached: Attachments (Exhibits) to the Argument brief and PDF version of Argument brief attached. (Argument prepared by applicant).
JPG file(s):Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_2601151100bfa039499ab 42f066661-202006102058543 85730_._Arguments_for_880 92681_TOFIEN.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 018 for Attaché cases; Backpacks; Bags for sports; Canvas shopping bags; Clothing for pets; Diaper bags; Handbags; Haversacks; Hiking poles; Pocket wallets; Pouch baby carriers; Purses; School bags; Suitcases; Traveling bags; Travelling bags; Travelling trunks; Vanity cases, not fitted; Wheeled shopping bags; Leather bags
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 08/08/2010 and first used in commerce at least as early as 08/08/2010 , and is now in use in such commerce.


Proposed:
Class 018 for Attaché cases; Backpacks; Bags for sports; Canvas shopping bags; Clothing for pets; Diaper bags; Handbags; Haversacks; Hiking poles; Pocket wallets; Pouch baby carriers; Purses; School bags; Suitcases; Traveling bags; Travelling bags; Travelling trunks; Vanity cases, not fitted; Wheeled shopping bags; Leather bags
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 08/08/2010 and first used in commerce at least as early as 08/08/2010 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 018. The specimen(s) submitted consists of Digitally-photographed amazon.com computer screenshots of traveling bags/zipper beach bags featuring online point of sale displaying Applicant's mark as currently used in U.S. commerce for the goods described herein and picture of goods in storage..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

The owner's/holder's proposed attorney information: Francis H. Koh. Francis H. Koh of Koh Law Firm, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      4800 Hampden Lane, Ste. 200
      Bethesda, Maryland 20814
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is Ryan.
      The phone number is 301-881-3600.
      The fax number is 1-888-252-6616.
      The email address is fkohmail@gmail.com

Francis H. Koh 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.Correspondence Information (current):
      DENG XIU FANG
      PRIMARY EMAIL FOR CORRESPONDENCE: besmarting@126.ocm
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): 1599202290@qq.com
Correspondence Information (proposed):
      Francis H. Koh
      PRIMARY EMAIL FOR CORRESPONDENCE: fkohmail@gmail.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): 1599202290@qq.com; besmarting@126.com

The docket/reference number is Ryan.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Francis Koh/      Date: 06/10/2020
Signatory's Name: Francis H. Koh
Signatory's Position: Attorney of Record, Virginia Bar Member
Signatory's Phone Number: 301-881-3600


Response Signature
Signature: /Francis Koh/     Date: 06/10/2020
Signatory's Name: Francis H. Koh
Signatory's Position: Attorney of Record, Virginia Bar Member

Signatory's Phone Number: 301-881-3600

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.

Mailing Address:    DENG XIU FANG
   SHENZHEN TENGFEI INTELLECTUAL PROPERTY SERVICES LI
   19D BUILDING1 CHENGXINHUATING
   SHICHANG 1ST ROAD BUJI ST LONGGANG DIST
   SHENZHEN, 518114
Mailing Address:    Francis H. Koh
   Koh Law Firm, LLC
   4800 Hampden Lane, Ste. 200
   Bethesda, Maryland 20814
        
Serial Number: 88092681
Internet Transmission Date: Wed Jun 10 21:18:01 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXXX:XXXX:XXXX:XX
XX:XXXX-20200610211801555413-88092681-71
01adee7a2b2241d18859b8ebcf3cbbec44396ddf
85a6b2e7d159b2f3b27d6cb-N/A-N/A-20200610
205854385730