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. 88138819 F1(Standard Characters, see http://uspto.report/TM/88138819/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Soaps; eau-de-cologne; astringents for cosmetic purposes; cleaning chalk; hair conditioners; cosmetic creams; shaving creams, shaving gels; facial cleansing creams; shower gels and creams; skin care creams, beauty creams, moisturising creams; shoe waxes; polishing creams; deodorants and anti-perspirants for personal use; incense; cosmetic pencils; sun care lotions; pre-shave and after- shave lotions; hair lotions, hair gels, hair creams, hair spray; decorative transfers for cosmetic purposes; essential oils; eye shadows; perfumes; face powders; cosmetic preparations for baths; cleaning, polishing, scouring and abrasive preparations for household use, not being preparations for washing automobiles; make-up preparations; washing preparations; cleaning preparations; make-up removing preparations; oral care products, particularly including dentifrices, mouthwashes; cleansing products for the body, particularly including cleansing lotions, beauty masks, cleansing foam, cleansing creams, cleansing gels and cleansing milk; cleaning products; liquid soaps
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1036823 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Soaps; Non-medicated soaps; eau-de-cologne; astringents for cosmetic purposes; cleaning chalk; hair conditioners; cosmetic creams; shaving creams, shaving gels; facial cleansing creams; shower gels and creams; skin care creams, beauty creams, moisturising creams; shoe waxes; polishing creams; deodorants and anti-perspirants for personal use; deodorants and antiperspirants for personal use; incense; cosmetic pencils; sun care lotions; pre-shave and after- shave lotions; hair lotions, hair gels, hair creams, hair spray; decorative transfers for cosmetic purposes; essential oils; eye shadows; perfumes; face powders; cosmetic preparations for baths; cleaning, polishing, scouring and abrasive preparations for household use, not being preparations for washing automobiles; make-up preparations; washing preparations; cleaning preparations; make-up removing preparations; oral care products, particularly including dentifrices, mouthwashes; oral care products, namely, dentifrices, non-medicated mouthwashes; cleansing products for the body, particularly including cleansing lotions, beauty masks, cleansing foam, cleansing creams, cleansing gels and cleansing milk; cleansing products for the body, namely, cleansing lotions, beauty masks, cleansing foam, cleansing creams, cleansing gels and cleansing milk; cleaning products; liquid soapsClass 003 for Non-medicated soaps; eau-de-cologne; astringents for cosmetic purposes; cleaning chalk; hair conditioners; cosmetic creams; shaving creams, shaving gels; facial cleansing creams; shower gels and creams; skin care creams, beauty creams, moisturising creams; shoe waxes; polishing creams; deodorants and antiperspirants for personal use; incense; cosmetic pencils; sun care lotions; pre-shave and after- shave lotions; hair lotions, hair gels, hair creams, hair spray; decorative transfers for cosmetic purposes; essential oils; eye shadows; perfumes; face powders; cosmetic preparations for baths; cleaning, polishing, scouring and abrasive preparations for household use, not being preparations for washing automobiles; make-up preparations; washing preparations; cleaning preparations; make-up removing preparations; oral care products, namely, dentifrices, non-medicated mouthwashes; cleansing products for the body, namely, cleansing lotions, beauty masks, cleansing foam, cleansing creams, cleansing gels and cleansing milk; cleaning products; liquid soaps
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1036823 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Formula One Licensing B.V., a corporation of Netherlands, having an address of
      Beursplein 37
      Rotterdam, 3011AA
      Netherlands

Proposed: Formula One Licensing B.V., besloten vennootschap (b.v.) legally organized under the laws of Netherlands, having an address of
      Beursplein 37
      Rotterdam, 3011AA
      Netherlands

SIGNATURE(S)
Response Signature
Signature: /Jill JK. Tomlinson/     Date: 06/20/2019
Signatory's Name: Jill K. Tomlinson
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 2127758700

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: 88138819
Internet Transmission Date: Thu Jun 20 11:47:28 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201906201147283
85208-88138819-620d097fbb94553592dc79984
422e4448088617294669aee811aacc1ed280aec0
-N/A-N/A-20190620104859967656