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. 88238118 OLEANDER (Stylized and/or with Design, see http://uspto.report/TM/88238118/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of applied for?mark oleander(No.88238118 & 88243454 ) for goods in International Class 3 and 21?based on similarity with earlier registrations for the marks?OLEANDRX(No.85867970) in class 5 and OLEANDER(No.87118870) in class 25. We respectfully request a reconsideration of the USPTO?s refusal of the above-referenced trademark application. In this case, both the pending marks and the cited marks take same image of ?oleander? to convey their brand impressions. The owner of registered mark ?OLEADRX?(No.85867970) is an institute studying on medical used personal care products, which contains oleand ingredient. For OLEANDRX, it indicates two things to their clients, one is that OLEANDRX product?s is made of OLEAND, the other is OLEANDRX is safe and purely natural. Besides, ?OLEANDER? in class 25 goods of clothing just simply to convey a literal meaning of ?oleander?. Finally, the pending mark ?oleander? in class 3 and 21 indicates that the brand owner?s wish for every user who is as beautiful and charming as the blossom of oleander. Although all these four marks are related with ?oleand?, the meanings of each brand is different because the goods are different. By comparison with ?oleander? in class 25, the applicant holds that ?OLEANDER? is not so famous that consumers will think OLEANDER clothing is related with OLEANDER cosmetic tools in class21 or cosmetic cleaners in class 3. Since OLEANDER is not a well-known brand in clothing or cosmetic related field, the applicant insists that no one would compare his brand with the registered mark ?OLEANDER? clothing related brand. For OLEANDRX in class 5, the cited mark OLEANDRX sales medicated skin care creams which is medical used while the applied for mark ?oleander? focuses on non-medical cosmetics. It should be noticed that medicated creams are mostly sold in chemist?s shop and for those people who need medical treatment. Further more, the registered mark ?OLEANDRX? is printed on the package in ?OLEAND? and ?RX?, ?ORX?. RX means prescription in medical field. However, the applied for mark is a brand for cosmetic tools and non-medical cosmetics, the brand conveys a wish of blossom beauty of oleander flowers. Therefore, we can lean that the registered mark ?OLEAD-RX? and pending mark ?OLEANDER? are printed on the different products in different ways. People remember the registered mark as ?oleand-RX? or ?ORX? while the pending mark ?OLEANDER? with Japanese below. And Japanese culture background might come to their mind when they think of this brand. Moreover, the citing website and citing goods are about acne cleaning and wrinkle repairing, which is aimed for beauty, not related with any medicated purpose. From the website of OLEANDRX, It shows that the company ?has focused research and product development on the anti-cancer, anti-viral, immune-stimulating, and the dermal properties of natural botanical compounds?. Thus, OLEANDRX?s goods are for medical purpose, which will not cause any confusion with the applied for mark in the market. For the reasons set forth above, there is no likelihood of confusion among clients. Applicant respectfully requests the trademark be granted and the refusal withdrawn.

EVIDENCE

Original PDF file:
evi_10423323616-20190506042054232619_._OLEANDER_Response_to_Office_Action.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

ADDITIONAL STATEMENTS
Translation
The English translation of the Japanese characters in the mark is "OLEANDER".


SIGNATURE(S)
Response Signature
Signature: /HUANG JIAXIN/     Date: 05/06/2019
Signatory's Name: HUANG JIAXIN
Signatory's Position: Owner

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88238118
Internet Transmission Date: Mon May 06 05:27:43 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201905060527434
60301-88238118-62040cba64c2d1dfbdb8b14b3
df6067a4c5c72381aaaf9b896c2bdb278d4bf2-N
/A-N/A-20190506042054232619