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) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88265712 |
LAW OFFICE ASSIGNED | LAW OFFICE 125 |
MARK SECTION | |
MARK | http://uspto.report/TM/88265712/mark.png |
LITERAL ELEMENT | MY CONTOUR |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) | |
NAME | Banyan Licensing L.L.C. |
STREET | 1430 West Pointe Drive, Suite K |
CITY | Charlotte |
STATE | North Carolina |
ZIP/POSTAL CODE | 28214 |
COUNTRY | United States |
OWNER SECTION (proposed) | |
NAME | Banyan Licensing L.L.C. |
STREET | 1430 West Pointe Drive, Suite K |
CITY | Charlotte |
STATE | North Carolina |
ZIP/POSTAL CODE | 28214 |
COUNTRY | United States |
XXXX | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
ADDITIONAL STATEMENTS SECTION | |
MISCELLANEOUS STATEMENT | In the Office Action dated March 27, 2019, the Office requested that Applicant enter a disclaimer of the term "CONTOUR", alleging that the term is merely descriptive of "a characteristic, function, feature, purpose, or use of applicant's goods." Applicant respectfully submits that the term "CONTOUR" has acquired distinctiveness as applied to Applicant's goods. Because Applicant has used the term "CONTOUR" in commerce for more than thirty (30) years, Applicant is entitled to registration of CONTOUR-formative marks under Trademark Act § 2(f), 15 U.S.C. § 1052(f), based on acquired distinctiveness. The Applicant need present only a prima facie case of acquired distinctiveness to be entitled to registration and that five (5) years' use in commerce may be accepted as prima facie evidence that the mark has acquired distinctiveness. TMEP §§ 1212.01 and 1212.05. Applicant has used CONTOUR-formative marks for pillows in commerce since at least as early as 1985. In this regard, Applicant draws the Examining Attorney's attention to Applicant's U.S. Registration No. 1,443,231 on the Principal Register for the mark CONTOUR CLOUD, which registration was registered on June 16, 1987, and recites June 26, 1984, as the date of first use, and March 15, 1985, as the date of first use in commerce. Applicant also draws the Examining Attorney's attention to Applicant's U.S. Registration No. 1,973,621 for the CONTOUR & Design mark and U.S. Registration No. 3,385,454 for the CONTOUR LIVING mark, which two (2) registrations are on the Principal Register and do not include a disclaimer of the term "CONTOUR". Applicant further notes that Applicant's U.S. Registration No. 3,385,454 for the CONTOUR LIVING mark includes a claim of acquired distinctiveness, in part, as to the term "CONTOUR" based on Applicant's ownership of U.S. Registration No. 1,973,621 on the Principal Register for the CONTOUR & Design mark for related goods. True and correct printouts of the USPTO records for Applicant's U.S. Registration No. 1,443,231 for the mark CONTOUR CLOUD, U.S. Registration No. 1,973,621 for the mark CONTOUR & Design, and U.S. Registration No. 3,385,454 for the mark CONTOUR LIVING are attached hereto as Exhibit A. Applicant submits that the term "CONTOUR" has acquired distinctiveness through Applicant's substantially exclusive and continuous use of the term in commerce in connection with pillows since 1985. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw its rejection and disclaimer requirement and pass its application to publication at the earliest possible date. Such favorable action on the part of the Examiner is respectfully solicited. |
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use | CONTOUR has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | CONTOUR has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 1,973,621 and 3,385,454 |
ATTORNEY SECTION (new) | |
NAME | Henry B. Ward, III |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
YEAR OF ADMISSION | XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
FIRM NAME | Moore & Van Allen PLLC |
STREET | 100 North Tryon Street, Suite 4700 |
CITY | Charlotte |
STATE | North Carolina |
POSTAL CODE | 28202 |
COUNTRY | United States |
PHONE | 7043311027 |
FAX | 7043395853 |
CLT-TMCorrespondence@mvalaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 938257330186 |
OTHER APPOINTED ATTORNEY | Samantha N. Skains-Menchaca, J. Mark Wilson, Kathryn G. Cole, Minnie Kim, Kathryn W. Bina, Chandra Duncan, W. Kevin Ransom, Dickson M. Lupo, Jim Edwards, F. Emmett Weindruch, Jeffrey Gray, Arlene D. Hanks and Ellen A. Rubel |
CORRESPONDENCE SECTION (current) | |
CORRESPONDENCE SECTION (proposed) | |
NAME | Henry B. Ward, III |
FIRM NAME | Moore & Van Allen PLLC |
STREET | 100 North Tryon Street, Suite 4700 |
CITY | Charlotte |
STATE | North Carolina |
POSTAL CODE | 28202 |
COUNTRY | United States |
PHONE | 7043311027 |
FAX | 7043395853 |
CLT-TMCorrespondence@mvalaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 938257330186 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /sns/ |
SIGNATORY'S NAME | Samantha N. Skains-Menchaca |
SIGNATORY'S POSITION | Attorney of record, North Carolina bar member |
SIGNATORY'S PHONE NUMBER | 7043313587 |
DATE SIGNED | 09/27/2019 |
RESPONSE SIGNATURE | /sns/ |
SIGNATORY'S NAME | Samantha N. Skains-Menchaca |
SIGNATORY'S POSITION | Attorney of record, North Carolina bar member |
SIGNATORY'S PHONE NUMBER | 704-331-3587 |
DATE SIGNED | 09/27/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Fri Sep 27 17:51:42 EDT 2019 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190927175142088576-8826 5712-61011156318a1687e269 deecd16d245d18a123aee3dbb d736a4b7763b1907b40-N/A-N /A-20190927171020774844 |
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) |
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.