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. 88142289 SYNERGY(Standard Characters, see http://uspto.report/TM/88142289/mark.png) has been amended as follows:

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

In response to the Office Action, it is submitted that the originally filed specimen of use is acceptable.

The specimen submitted showed a "Flying Cross® Synergy™ NOMEX® IIA Station Shirt" that could be purchased via that retailer's web page. Flying Cross® is the brand name that refers to the shirts themselves—and is registered as a trademark for Class 25 clothing items owned by The Fechheimer Brothers Company.

The applicant here, Milliken & Company, manufactures fabrics, including SYNERGY® fabrics, that are used by its customers to then manufacture shirts and other garments/products. The applicant's SYNERGY fabrics are made with NOMEX® fiber—which explains why the NOMEX trademark also appears in the original specimen from the retailer's website.

The applicant also owns Registration No. 1,699,140 for the trademark SYNERGY covering Class 24 fabrics (registration copy enclosed). The applicant is a well-known manufacturer of performance textiles, such as flame-resistant fabrics. Purchasers of flame-resistant clothing, seeing the use of the marks SYNERGY and NOMEX in this specimen, would recognize those trademarks as referring to the component ingredients (fabrics and fibers, respectively) of the finished shirts.

Enclosed as evidence of this (not as a substitute specimen) is a web page advertising the applicant's SYNERGY fabrics and explaining the fibers in the fabrics.

While it is believed that the original specimen is acceptable, enclosed with this response are two substitute specimens that were in use in commerce prior to the deadline to file the Statement of Use. First is a photograph of a label that is sewn into the finished clothing items, displaying the trademark—and containing fabric care instructions. Purchasers of finished clothing would understand the SYNERGY trademark to refer to the fabric component of the clothing. Second is a web page screenshot of a different website where finished PROPPER® shirts that are made with the applicant's SYNERGY fabrics as a component of the shirts can be ordered. As can be seen by the arrow that has been added to that web page specimen, the web page suggests that a feature of the shirts is that they are made from SYNERGY fabrics—and thus that SYNERGY refers to a component of the flame-resistant shirts/clothing—and is not the brand name for the shirts themselves.

Now that all issues have been addressed, issuance of the registration is respectfully requested.

EVIDENCE
Evidence has been attached: web page advertisement explaining applicant's fabrics; TSDR printout of registration owned by applicant
Original PDF file:
evi_991178158-20200819145 300829081_._SYNERGY_-_Evi dence_1.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_991178158-20200819145 300829081_._SYNERGY_-_reg istered_mark.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Fabrics sold as a component of flame-resistant protective clothing
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

In International Class 009, the mark was first used at least as early as 11/01/2019 and first used in commerce at least as early as 11/01/2019.


Proposed:
Class 009 for Fabrics sold as a component of flame-resistant protective clothing

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 11/01/2019 . and first used in commerce at least as early as 11/01/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of photograph of a clothing label; screen shot of a web page where the goods can be ordered.
"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

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Milliken & Company, a corporation of Delaware, having an address of

            M495      920 Milliken Road
      Spartanburg, South Carolina 29303
      United States

Proposed: Milliken & Company, a corporation of Delaware, having an address of
      M495
      920 Milliken Road
      Spartanburg, South Carolina 29303
      United States
      Email Address: XXXX
Correspondence Information (current):
      CHARLES G. ZUG
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geordie.zug@nelsonmullins.com

The docket/reference number is 003724/09074.
Correspondence Information (proposed):
      Charles G. Zug
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geordie.zug@nelsonmullins.com

The docket/reference number is 003724/09074.

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: /cgz/      Date: 08/19/2020
Signatory's Name: Charles G. Zug
Signatory's Position: Attorney of record

Response Signature
Signature: /cgz/     Date: 08/19/2020
Signatory's Name: Charles G. Zug
Signatory's Position: Attorney of record

Signatory's Phone Number: 803-799-2000

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:    CHARLES G. ZUG
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   Suite 2300, IP Department
   301 S. College Street
   CHARLOTTE, North Carolina 28202
Mailing Address:    Charles G. Zug
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   Suite 2300, IP Department
   301 S. College Street
   CHARLOTTE, North Carolina 28202
        
Serial Number: 88142289
Internet Transmission Date: Wed Aug 19 15:02:47 ET 2020
TEAS Stamp: USPTO/ROA-XX.X.XXX.XXX-20200819150247136
315-88142289-74065652b4efc588db83d7fee46
d1e3e25df88cf1318e67888096c2edb39fe95d-N
/A-N/A-20200819145300829081