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. 88154919 CASCADES EZ-DISSOLV(Standard Characters, see http://uspto.report/TM/88154919/mark.png) has been amended as follows:

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

As noted by the examiner, the applicant has already registered CASCADES for paper towels.  Now, the applicant wants to register a narrow variant of that mark--CASCADES EZ-DISSOLV--for a specific form of towel: disinfecting wipes.

 

The examiner refused registration based on a P&G registration covering the use of CASCADE for cleansers and detergents.  The examiner has reasoned that confusion might occur if the applicant’s wipes were impregnated with a disinfecting cleanser.  The applicant’s wipes do not, however, include a disinfecting cleanser, and the applicant is willing to forego registration over that kind of wipe. 

 

The applicant has accordingly amended its application, and the 2(d) refusal can now be withdrawn because the applicant has amended its listing of goods to specifically exclude the only kind of product of concern to the examiner.  Specifically, the listing of goods in class 5 has been limited to “disinfecting wipes other than those impregnated with disinfecting cleanser.”  With this change, the only kind of wipe for which the examiner foresaw a possible 2(d) concern has now been specifically excised from the application.  With it goes the 2(d) concern.

 

A decision to withdraw the 2(d) refusal is supported by the fact that the narrowing of the listing of goods is not a token act, divorced from the realities of the market.  Long ago, P&G and the applicant considered the prospects of confusion and entered an agreement that binds the applicant in a way that ensures that the public will not be confused by its use.  Specifically, in paragraph 2 of the accompanying 1989 agreement with the Canadian arm of P&G, the applicant’s parent company (Cascades Inc.) agreed “not to use a detergent or cleaning product as an impregnating substance on their paper products under the trademark CASCADES.”  That agreement confirms that the applicant has agreed to and is taking steps that will prevent the mark from being used on the only kind of wipe that concerned the examiner. 

 

Thus, the case here is special because:

 

1) the applicant has already registered the portion of the mark (CASCADES) that the examiner was concerned about for the same general category of products at issue here (paper towels);

 

2)  the application at hand has been amended to specifically exclude kind of wipe that the examiner was concerned about (wipes that are impregnated with disinfecting cleanser); and

 

3)  the applicant has contractually agreed not to use the mark on that kind of wipe).

 

Under these special circumstances, the 2(d) refusal can clearly be withdrawn. 

 

EVIDENCE
Evidence in the nature of copy of a 1989 agreement between the owner of the applicant and P&G of Canada has been attached.
Original PDF file:
evi_5020216131-20190723135502370238_._DOCS-_5854244-v1-Procter__Gamble_Agreement_1989.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for (Based on Intent to Use) Disinfecting wipes(Based on 44(d) Priority Application) Disinfecting wipes
Original Filing Basis:
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1913768 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: (Based on Intent to Use) Disinfecting wipes(Based on 44(d) Priority Application) Disinfecting wipes; (Based on Intent to Use) Disinfecting wipes other than those impregnated with disinfecting cleanser(Based on 44(d) Priority Application) Disinfecting wipes other than those impregnated with disinfecting cleanserClass 005 for (Based on Intent to Use) Disinfecting wipes other than those impregnated with disinfecting cleanser(Based on 44(d) Priority Application) Disinfecting wipes other than those impregnated with disinfecting cleanser
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1913768 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use EASY-DISSOLVE apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3275671 and 3916468.


SIGNATURE(S)
Response Signature
Signature: /rmlabarge/     Date: 07/23/2019
Signatory's Name: Richard M. LaBarge
Signatory's Position: Attorney

Signatory's Phone Number: 312 474-6646

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: 88154919
Internet Transmission Date: Tue Jul 23 14:02:03 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019072314020387
1738-88154919-62091a86f5398a63639fa7bc23
1775b492339dcdcf2447fc772d43ea2ce4a529b-
N/A-N/A-20190723135502370238