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 | 88294872 |
LAW OFFICE ASSIGNED | LAW OFFICE 124 |
MARK SECTION | |
MARK | http://uspto.report/TM/88294872/mark.png |
LITERAL ELEMENT | SUPREME |
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. |
ARGUMENT(S) | |
REMARKS The Applicant respectfully requests that the cited rejections be withdrawn in view of the following remarks and the application be passed to publication. 2(d) Refusal The Applicant (Toto USA, Inc.) is a wholly owned subsidiary of the owner of the cited registrations (Toto Ltd.). As such, it is respectfully submitted that there is unity of control such that there is no likelihood of confusion per TMEP 1201.07(b)(i). According, U.S. Registration Nos. 2298450 and 3132214 cannot be cited against the present application. 2(e)(1) Refusal The Applicant respectfully disagrees that "SUPREME" is merely descriptive of the covered goods. While that term can be used to describe goods generally, nothing in the term itself indicates what the covered goods are. For example, "SUPREME" can describe a quality or characteristic of a very wide variety of goods that are not Applicant's goods. As such, the term is not merely descriptive of the listed goods. Regardless, and in view of the statements made in connection with the 2(d) refusal, the Applicant has been using the present mark continuously for at least 5 years, as evidenced by U.S. Registration Nos. 2298450 and 3132214. Accordingly, the mark has acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f); TMEP §1212.05. |
|
ADDITIONAL STATEMENTS SECTION | |
MISCELLANEOUS STATEMENT | The Applicant (Toto USA, Inc.) is a wholly owned subsidiary of the owner of the cited registrations (Toto Ltd.). As such, it is respectfully submitted that there is unity of control such that there is no likelihood of confusion per TMEP 1201.07(b)(i). |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /Carolyn S. Toto/ |
SIGNATORY'S NAME | Carolyn S. Toto |
SIGNATORY'S POSITION | Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER | 213-488-7100 |
DATE SIGNED | 05/01/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed May 01 14:20:39 EDT 2019 |
TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.X-2 0190501142039329960-88294 872-6203badb44db65debd746 f751d480228d49b4159ae6425 22d5dd6222cce2-N/A-N/A-20 190501141656909300 |
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) |
REMARKS
The Applicant respectfully requests that the cited rejections be withdrawn in view of the following remarks and the application be passed to publication.
2(d) Refusal
The Applicant (Toto USA, Inc.) is a wholly owned subsidiary of the owner of the cited registrations (Toto Ltd.). As such, it is respectfully submitted that there is unity of control such that there is no likelihood of confusion per TMEP 1201.07(b)(i). According, U.S. Registration Nos. 2298450 and 3132214 cannot be cited against the present application.
2(e)(1) Refusal
The Applicant respectfully disagrees that "SUPREME" is merely descriptive of the covered goods. While that term can be used to describe goods generally, nothing in the term itself indicates what the covered goods are. For example, "SUPREME" can describe a quality or characteristic of a very wide variety of goods that are not Applicant's goods. As such, the term is not merely descriptive of the listed goods.
Regardless, and in view of the statements made in connection with the 2(d) refusal, the Applicant has been using the present mark continuously for at least 5 years, as evidenced by U.S. Registration Nos. 2298450 and 3132214. Accordingly, the mark has acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f); TMEP §1212.05.