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. 88231504 GLIDING(Standard Characters, see http://uspto.report/TM/88231504/mark.png) has been amended as follows:

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

 

Remarks

 

Attached in support of Applicant’s Section 44(e) claim is a copy of Japanese Registration No. 6161410 for the GLIDING mark.  Also attached is an English language translation and signed Translator’s Certificate.

 

            Registration of the subject application has been refused on the Principal Register, under Section 2(e)(1) of the Trademark Act, on the basis that the mark merely describes the goods. Without conceding the correctness of this refusal, Applicant has amended the subject application to the Supplemental Register.  In view of the amendment of the subject application to the Supplemental Register, Applicant submits that the refusal to register based upon the assertion of descriptiveness should be withdrawn. 

 

Assuming all outstanding requirements have been met and the application is in condition for registration on the Supplemental Register solely on the basis of Applicant’s ownership of its home country registration, the Examining Attorney is authorized to delete the separate intent to use basis in order that the application may proceed on the basis of the corresponding home country registration.

 

Applicant is pleased to note that a search of the Trademark Office records identified no similar registered or pending mark which would bar registration under Trademark Act Section 2(d).  It is therefore respectfully submitted that the application is in condition for registration, and further and favorable action in connection therewith is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for office chairs; furniture
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[ Japan application number 2018-081724 filed 06/21/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 020 for office chairs; furniture
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 [ Japan application number 2018-081724 filed 06/21/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6161410 registered 07/12/2019 with a renewal date of __________ and an expiration date of 06/21/2028 ], 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.
Original PDF file:
FRU0-21620015371-104331407_._GLIDING_JP_reg_no__6161410.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1
Original PDF file:
FRU0-21620015371-104331407_._GLIDING_EN_translation_of_JP_6161410.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1
Original PDF file:
FRU0-21620015371-104331407_._GLIDING_trrTranslator_s_Certificate.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

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.

The applicant's current attorney information: Michael J. Leonard. Michael J. Leonard of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      US
The docket/reference number is 152353.00020.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com

The applicants proposed attorney information: Michael J. Leonard. Other appointed attorneys are Christopher D. Olszyk, Jr.. Michael J. Leonard of FOX ROTHSCHILD LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      United States
The docket/reference number is 152353.00020.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com

Michael J. Leonard 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: MICHAEL J. LEONARD. MICHAEL J. LEONARD of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      US
The docket/reference number is 152353.00020.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com; mleonard@foxrothschild.com

The applicants proposed correspondence information: Michael J. Leonard. Michael J. Leonard of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      United States
The docket/reference number is 152353.00020.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com; mleonard@foxrothschild.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /mjl/     Date: 08/21/2019
Signatory's Name: Michael J. Leonard
Signatory's Position: Attorney of Record, PA Bar Member

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:    MICHAEL J. LEONARD
   FOX ROTHSCHILD LLP
   
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
Mailing Address:    Michael J. Leonard
   FOX ROTHSCHILD LLP
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
        
Serial Number: 88231504
Internet Transmission Date: Wed Aug 21 10:52:45 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201908211052453
67275-88231504-6102be7637643ac0f0b48d46b
a07ef991af0ea3598a6db406d7f10c23eef08e-N
/A-N/A-20190821104331407352