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. 88161354 CARRIAGE HOUSE CABINET COLLECTION(Standard Characters, see http://uspto.report/TM/88161354/mark.png) has been amended as follows:

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

Regarding the 2(d) refusal based on Registration No. 3508611 (the “Cited Registration”), Applicant respectfully submits that the Cited Registration should not bar Applicant’s registration of its mark since, upon information and belief, the mark is not in use.  Applicant notes that the Registrant’s renewal was due on Oct 1, 2018 and it was not renewed.  The grace period will end on April 1, 2019 and, upon information and belief, the Cited Registration will not be not be renewed.  Accordingly, Applicant requests that, pursuant to TMEP §716 and 37 C.F.R. §2.67,  the Examining Attorney suspend any further action on Applicant’s Application until it is determined if the Cited Registration will be renewed.  Under the applicable rules, the Examining Attorney has the discretion to suspend an application "for good and sufficient cause."   Applicant respectfully submits that there is good and sufficient cause to suspend Applicant’s Application since it will save time and resources for both the USPTO and Applicant.  This is particularly true where, as here, the Cited Registration is within the grace period for renewal.  The applicable rules indicate that in situations where the Examining Attorney is ready to issue a final refusal of registration under §2(d), and the Cited Registration is in the grace period, the Examining attorney must suspend action pending a determination of whether the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or whether the registration is renewed.  See TMEP  §716.02(e).  Thus, Applicant respectfully requests that such a suspension be entered at this time.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Wholesale services featuring kitchen cabinets
Original Filing Basis:
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 02/15/2006 and first used in commerce at least as early as 02/15/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Wholesale services featuring kitchen cabinets; Wholesale distributorship services featuring kitchen cabinetsClass 035 for Wholesale distributorship services featuring kitchen cabinets
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 02/15/2006 and first used in commerce at least as early as 02/15/2006 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of digital copy of an invoice reflecting Applicant's sale of kitchen cabinets to a retailer for resale to its customers, which demonstrates Applicant's use of the mark in connection with wholesale distributorship services featuring kitchen cabinets and a print-out from Applicant's website reflecting information about becoming a dealer for Applicant .
"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].
Original PDF file:
SPU1-7513022018-20190312094613341506_._SpecimenSub_RedactedInvoice.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU1-7513022018-20190321114236050900_._SpecimenSub_AboutCarriageHouse.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CABINET COLLECTION apart from the mark as shown.


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: /Michelle Alvey/      Date: 03/22/2019
Signatory's Name: Michelle Alvey
Signatory's Position: Attorney of Record, MO Bar Member
Signatory's Phone Number: 314-480-1500


Response Signature
Signature: /Michelle Alvey/     Date: 03/22/2019
Signatory's Name: Michelle Alvey
Signatory's Position: Attorney of record, Missouri bar member

Signatory's Phone Number: (314) 480-1500

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: 88161354
Internet Transmission Date: Fri Mar 22 09:50:06 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019032209500696
0715-88161354-62098f2786818ee21d380d20dc
915a28d62992598f0d3a41dfccfa3cc35647474-
N/A-N/A-20190321121602608009