TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88107786 PH(Standard Characters, see http://uspto.report/TM/88107786/mark.png) has been amended as follows:
CANCELLATION PROCEEDING(S)
Cancellation No(s). 92072548 and 92072620 is/are still pending. However, the applicant hereby requests removal of this application from suspension for the examining attorney to consider a submission, such as an amendment or consent agreement.
Comment(s)/Remark(s):

Statement:  In the Office Action, the Examining Attorney refused registration of the applied-for-mark because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 5,015,046 and 5,019,629.  Attached, please find a Consent Agreement for the applied-for-mark executed by the owner of the cited registrations, in which the owner consents to the registration of the applied-for-mark on the basis, among other reasons, that the parties do not believe that a likelihood of confusion exists due to differences between the relevant marks, differences in the respective services, and different channels of trade.  Please note that Please Hold (UK) Ltd, which has executed the Consent Agreement, is the owner of Registration Nos. 5,015,046 and 5,019,629 cited by the Examining Attorney.  Accordingly, as there is no likelihood of confusion as between the cited registrations and the applied-for-mark, Applicant respectfully submits that the Section 2(d) refusal should be withdrawn and the instant application should proceed to publication.

Evidence Statement:  Evidence in the nature of a Consent Agreement for the applied-for-mark executed by Please Hold (UK) Ltd, the owner of the cited U.S. Registration Nos. 5,015,046 and 5,019,629.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Licensing IP International S.àr.l., a limited liability company legally organized under the laws of Luxembourg, having an address of
      32 boulevard Royal
      Luxembourg, L-2449
      Luxembourg
      Email Address: XXXX
      310-312-3111
      (310) 231-8311Proposed: Licensing IP International S.àr.l., a limited liability company legally organized under the laws of Luxembourg, having an address of
      32 boulevard Royal
      Luxembourg, L-2449
      Luxembourg
      Email Address: XXXX
      310-312-3111
      (310) 231-8311

ADDITIONAL STATEMENTS
Miscellaneous Statement
Evidence Statement: Evidence in the nature of a Consent Agreement for the applied-for-mark executed by Please Hold (UK) Ltd, the owner of the cited U.S. Registration Nos. 5,015,046 and 5,019,629.
Original PDF file:
mis-20990653-202004101559 49662634_._r_of_Consent_P H_Mark_Appl._Serial_No._8 8_107_786_12033404.1_.pdf
Converted PDF file(s) (5 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Correspondence Information (current):
      Evan M. Kent
      PRIMARY EMAIL FOR CORRESPONDENCE: Trademark@msk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): emk@msk.com; amd@msk.com
Correspondence Information (proposed):
      Evan M. Kent
      PRIMARY EMAIL FOR CORRESPONDENCE: Trademark@msk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): emk@msk.com; amd@msk.com

The docket/reference number is 43277.

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

Response Suspension Inquiry Signature
Signature: /Alesha M. Dominique/     Date: 04/10/2020
Signatory's Name: Alesha M. Dominique
Signatory's Position: Attorney of record, DC bar member
Signatory's Phone Number: 310-312-2000

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:    Evan M. Kent
   MITCHELL SILBERBERG & KNUPP LLP
   18th Floor
   2049 Century Park East
   LOS ANGELES, California
Mailing Address:    Evan M. Kent
   MITCHELL SILBERBERG & KNUPP LLP
   18th Floor
   2049 Century Park East
   LOS ANGELES, California 90067
        
Serial Number: 88107786
Internet Transmission Date: Fri Apr 10 16:24:31 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XX.XX.X-202004101624314097
16-88107786-71028e62fdc442316980cf47d520
9d61da4a77adac7a69f33acf4e83f97692178a-N
/A-N/A-20200410155949662634