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. 88265712 MY CONTOUR(Standard Characters, see http://uspto.report/TM/88265712/mark.png) has been amended as follows:

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Banyan Licensing L.L.C., a limited liability company legally organized under the laws of Florida, having an address of
      1430 West Pointe Drive, Suite K
      Charlotte, North Carolina 28214
      United States

Proposed: Banyan Licensing L.L.C., a limited liability company legally organized under the laws of Florida, having an address of
      1430 West Pointe Drive, Suite K
      Charlotte, North Carolina 28214
      United States
      XXXX (authorized)

The applicant hereby appoints Henry B. Ward, III. Other appointed attorneys are 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. Henry B. Ward, III of Moore & Van Allen PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      100 North Tryon Street, Suite 4700
      Charlotte, North Carolina 28202
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 938257330186.

The phone number is 7043311027.

The fax number is 7043395853.

The email address is CLT-TMCorrespondence@mvalaw.com

Henry B. Ward, III 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: . , is located at

      
      ,

The applicants proposed correspondence information: Henry B. Ward, III. Henry B. Ward, III of Moore & Van Allen PLLC, is located at

      100 North Tryon Street, Suite 4700
      Charlotte, North Carolina 28202
      United States
The docket/reference number is 938257330186.

The phone number is 7043311027.

The fax number is 7043395853.

The email address is CLT-TMCorrespondence@mvalaw.com

ADDITIONAL STATEMENTS
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


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: /sns/      Date: 09/27/2019
Signatory's Name: Samantha N. Skains-Menchaca
Signatory's Position: Attorney of record, North Carolina bar member
Signatory's Phone Number: 7043313587


Response Signature
Signature: /sns/     Date: 09/27/2019
Signatory's Name: Samantha N. Skains-Menchaca
Signatory's Position: Attorney of record, North Carolina bar member

Signatory's Phone Number: 704-331-3587

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:    
   
   
   
   ,
Mailing Address:    Henry B. Ward, III
   Moore & Van Allen PLLC
   100 North Tryon Street, Suite 4700
   Charlotte, North Carolina 28202
        
Serial Number: 88265712
Internet Transmission Date: Fri Sep 27 17:51:42 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909271751420
88576-88265712-61011156318a1687e269deecd
16d245d18a123aee3dbbd736a4b7763b1907b40-
N/A-N/A-20190927171020774844