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. 88210464 VERSETT AN IHG HOTEL(Standard Characters, see http://uspto.report/TM/88210464/mark.png) has been amended as follows:

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

Applicant submits the following remarks in response to the Office Action dated March 7, 2019.

The Examining Attorney has cited (a) the following registrations owned by Six Continents Hotels, Inc. - U.S. Registration Nos. 5541939 (CANDLEWOOD SUITES AN IHG HOTEL & Design), 5546793 (CROWN PLAZA HOTELS & RESORTS AN IHG HOTEL & Design), 5498920 (HOLIDAY INN AN IHG HOTEL & Design), 5546794 (HOLIDAY INN EXPRESS AN IHG HOTEL & Design), 5551691 (HOLIDAY INN RESORT AN IHG HOTEL & Design), 5498899 (HOLIDAY INN AN IHG HOTEL), and 5546795 (STAYBRIDGE SUITES AN IHG HOTEL & Design); and (b) the following applications owned by Intercontinental Hotels Group (Asia Pacific) Pte. Ltd. - Application Nos. 87381318 (EVEN HOTELS AN IHG HOTEL & Design) and 87378356 (EVEN HOTELS AN IHG HOTEL), as bars and potential bars to registration of the applied-for mark on likelihood of confusion grounds. 

As noted to TMEP § 1201.07(a), whenever there is close corporate relationship between an applicant and the owners of the cited registration(s) and/or application(s), confusion should be deemed unlikely because the related companies and Applicant constitute a “single source” in the eyes of the consuming public.  In re The Salvation Army, Serial No. 861503366, 2016 WL 3912936, at *9 (TTAB July 8, 2016) (finding a unity of control between the Salvation Army’s various organizational entities relating to their common usage of the SALVATION ARMY mark)

Here, Applicant Six Continents Hotels, Inc. and Intercontinental Hotels Group (Asia Pacific) Pte. Ltd. are all fully owned subsidiaries of InterContinental Hotels Group PLC.  They operate under common control to offer services under the IHG brand.  This uniformity of control results in the presentation and offering of IHG-branded services as emanating from a unified single source.  Applicant submits with this Response a declaration attesting to these facts and further detailing the relationship between the parties. 

In view of the foregoing, Applicant respectfully requests that the refusal of this application be withdrawn and the application be approved for publication. 

EVIDENCE
Evidence in the nature of Unity of Control executed declaration has been attached.
Original PDF file:
evi_6520724-20190909171602280912_._VERSETT_AN_IHG_HOTEL_Unity_of_Control_Declaration.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

The applicant's current attorney information: Danny M. Awdeh. Danny M. Awdeh of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 12942.0250.

The phone number is 202-408-4000.

The fax number is 202.408.4400.

The email address is docketing@finnegan.com

The applicants proposed attorney information: Danny M. Awdeh. Other appointed attorneys are each of the other attorneys. Danny M. Awdeh of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 12942.0250.

The phone number is 202-408-4000.

The fax number is 202.408.4400.

The email address is docketing@finnegan.com

Danny M. Awdeh submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: DANNY M. AWDEH. DANNY M. AWDEH of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 12942.0250.

The phone number is 202-408-4000.

The fax number is 202.408.4400.

The email address is docketing@finnegan.com

The applicants proposed correspondence information: Danny M. Awdeh. Danny M. Awdeh of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 12942.0250.

The phone number is 202-408-4000.

The fax number is 202.408.4400.

The email address is docketing@finnegan.com

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


SIGNATURE(S)
Response Signature
Signature: /Danny M. Awdeh/     Date: 09/09/2019
Signatory's Name: Danny M. Awdeh
Signatory's Position: Attorney of record

Signatory's Phone Number: 202.408.4000

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:    DANNY M. AWDEH
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL
   
   901 NEW YORK AVENUE, NW
   WASHINGTON, District of Columbia 20001
Mailing Address:    Danny M. Awdeh
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL
   901 NEW YORK AVENUE, NW
   WASHINGTON, District of Columbia 20001
        
Serial Number: 88210464
Internet Transmission Date: Mon Sep 09 17:28:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2019090917285410181
5-88210464-6105743ff533e69fe16c18c2a8512
a94ab69e2ccce7d5d4e8afd27685e7d31cc29-N/
A-N/A-20190909171602280912