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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88317908 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 115 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88317908/mark.png |
| LITERAL ELEMENT |
WAYFAIR |
| 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) |
| The Applicant, Wayfair LLC, acknowledges receipt of the Office Action, dated April 1, 2019 (the "Office Action"), of Examining Attorney Bridgett G.
Smith, Esq., (the "EA") in connection with the Application Serial No. 88317908 (the "Application") for registration of the mark WAYFAIR (the "Mark"). The EA has found that application no. 87690818
(the "Cited Application"), which precedes the Applicant's application date, could bar registration of the Applicant's Mark, if it registers. In response, Applicant, without conceding that the Mark is
confusingly similar to the Cited Application, hereby requests suspension of the Application pending the disposition of the Cited Application. Applicant will address all issues pertaining to the
identification of goods and services when the Application is removed from suspension. |
| ATTORNEY SECTION (current) |
| NAME |
Rachelle A. Dubow, Esq. |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
MORGAN, LEWIS & BOCKIUS LLP |
| INTERNAL ADDRESS |
ATTN: TMSU |
| STREET |
ONE FEDERAL STREET |
| CITY |
BOSTON |
| STATE |
Massachusetts |
| POSTAL CODE |
02110 |
| COUNTRY |
US |
| PHONE |
617-951-8939 |
| FAX |
6179518736 |
| EMAIL |
trademarks@morganlewis.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
107525-0034 |
| ATTORNEY SECTION (proposed) |
| NAME |
Rachelle A. Dubow, Esq. |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
MORGAN, LEWIS & BOCKIUS LLP |
| INTERNAL ADDRESS |
ATTN: TMSU |
| STREET |
ONE FEDERAL STREET |
| CITY |
BOSTON |
| STATE |
Massachusetts |
| POSTAL CODE |
02110 |
| COUNTRY |
United States |
| PHONE |
617-951-8939 |
| FAX |
6179518736 |
| EMAIL |
trademarks@morganlewis.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
107525-0034 |
| OTHER APPOINTED ATTORNEY |
the firm of Morgan, Lewis & Bockius LLP, RON N. DREBEN, KAREN A. BUTCHER, ANITA B. POLOTT, CAROLE R. KLEIN, JOSEPH E. WASHINGTON,
KRISTIN H. ALTOFF, DANA S. GROSS, DANIEL S. MARKS, JANE W. WISE, SETH A. RAPPAPORT, CONSTANCE BOUTSIKARIS, and REBECCA E. MCDOUGALL, members of the District of Columbia Bar and RACHEL FERTIG, member
of the New York Bar, all located at 1111 Pennsylvania Ave., NW, Washington, D.C. 20004, ROCHELLE D. ALPERT, CARLA B. OAKLEY, SHARON R. SMITH and BRITTANY A. ESTELL, members of the California Bar,
PETER G. BYRNE, member of the California Bar and Massachusetts Bar, and GENE K. PARK, member of the District of Columbia Bar, all located at One Market, Spear Street Tower, San Francisco, California
94105, ANDREW J. GRAY IV, member of the California Bar, located at 1400 Page Mill Road, Palo Alto, California 94304, and RACHELLE A. DUBOW, DAVID O. JOHANSON and AMELIA G. PENNINGTON, members of the
Massachusetts Bar, all located at One Federal Street, Boston, Massachusetts 02110, all of whom should receive correspondence and documents related to this application through the offices of Morgan,
Lewis & Bockius LLP |
| CORRESPONDENCE SECTION (current) |
| NAME |
RACHELLE A. DUBOW, ESQ. |
| FIRM NAME |
MORGAN, LEWIS & BOCKIUS LLP |
| INTERNAL ADDRESS |
ATTN: TMSU |
| STREET |
ONE FEDERAL STREET |
| CITY |
BOSTON |
| STATE |
Massachusetts |
| POSTAL CODE |
02110 |
| COUNTRY |
US |
| PHONE |
617-951-8939 |
| FAX |
6179518736 |
| EMAIL |
trademarks@morganlewis.com; rachelle.dubow@morganlewis.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
107525-0034 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Rachelle A. Dubow, Esq. |
| FIRM NAME |
MORGAN, LEWIS & BOCKIUS LLP |
| INTERNAL ADDRESS |
ATTN: TMSU |
| STREET |
ONE FEDERAL STREET |
| CITY |
BOSTON |
| STATE |
Massachusetts |
| POSTAL CODE |
02110 |
| COUNTRY |
United States |
| PHONE |
617-951-8939 |
| FAX |
6179518736 |
| EMAIL |
trademarks@morganlewis.com; rachelle.dubow@morganlewis.com; amelia.pennington@morganlewis.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
107525-0034 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/rachelledubow/ |
| SIGNATORY'S NAME |
Rachelle A. Dubow, Esq. |
| SIGNATORY'S POSITION |
Attorney for Applicant, Massachusetts bar member |
| SIGNATORY'S PHONE NUMBER |
6179518939 |
| DATE SIGNED |
09/17/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Tue Sep 17 16:37:16 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0190917163716765827-88317
908-6104c7e2156af2d101ec7
cde5be9d9cd695b333e33f9f3
2a7bec12a5de5f17121-N/A-N
/A-20190917155224687650 |
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.
88317908 WAYFAIR(Standard Characters, see http://uspto.report/TM/88317908/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Applicant, Wayfair LLC, acknowledges receipt of the Office Action, dated April 1, 2019 (the "Office Action"), of Examining Attorney Bridgett G. Smith, Esq., (the "EA") in connection with the
Application Serial No. 88317908 (the "Application") for registration of the mark WAYFAIR (the "Mark"). The EA has found that application no. 87690818 (the "Cited Application"), which precedes the
Applicant's application date, could bar registration of the Applicant's Mark, if it registers. In response, Applicant, without conceding that the Mark is confusingly similar to the Cited Application,
hereby requests suspension of the Application pending the disposition of the Cited Application. Applicant will address all issues pertaining to the identification of goods and services when the
Application is removed from suspension.
The applicant's current attorney information: Rachelle A. Dubow, Esq.. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS LLP, is located at
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
US
The docket/reference number is 107525-0034.
The phone number is 617-951-8939.
The fax number is 6179518736.
The email address is trademarks@morganlewis.com
The applicants proposed attorney information: Rachelle A. Dubow, Esq.. Other appointed attorneys are the firm of Morgan, Lewis & Bockius LLP, RON N. DREBEN, KAREN A. BUTCHER, ANITA B. POLOTT,
CAROLE R. KLEIN, JOSEPH E. WASHINGTON, KRISTIN H. ALTOFF, DANA S. GROSS, DANIEL S. MARKS, JANE W. WISE, SETH A. RAPPAPORT, CONSTANCE BOUTSIKARIS, and REBECCA E. MCDOUGALL, members of the District of
Columbia Bar and RACHEL FERTIG, member of the New York Bar, all located at 1111 Pennsylvania Ave., NW, Washington, D.C. 20004, ROCHELLE D. ALPERT, CARLA B. OAKLEY, SHARON R. SMITH and BRITTANY A.
ESTELL, members of the California Bar, PETER G. BYRNE, member of the California Bar and Massachusetts Bar, and GENE K. PARK, member of the District of Columbia Bar, all located at One Market, Spear
Street Tower, San Francisco, California 94105, ANDREW J. GRAY IV, member of the California Bar, located at 1400 Page Mill Road, Palo Alto, California 94304, and RACHELLE A. DUBOW, DAVID O. JOHANSON
and AMELIA G. PENNINGTON, members of the Massachusetts Bar, all located at One Federal Street, Boston, Massachusetts 02110, all of whom should receive correspondence and documents related to this
application through the offices of Morgan, Lewis & Bockius LLP. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS 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
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
United States
The docket/reference number is 107525-0034.
The phone number is 617-951-8939.
The fax number is 6179518736.
The email address is trademarks@morganlewis.com
Rachelle A. Dubow, Esq. 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: RACHELLE A. DUBOW, ESQ.. RACHELLE A. DUBOW, ESQ. of MORGAN, LEWIS & BOCKIUS LLP, is located at
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
US
The docket/reference number is 107525-0034.
The phone number is 617-951-8939.
The fax number is 6179518736.
The email address is trademarks@morganlewis.com; rachelle.dubow@morganlewis.com
The applicants proposed correspondence information: Rachelle A. Dubow, Esq.. Rachelle A. Dubow, Esq. of MORGAN, LEWIS & BOCKIUS LLP, is located at
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
United States
The docket/reference number is 107525-0034.
The phone number is 617-951-8939.
The fax number is 6179518736.
The email address is trademarks@morganlewis.com; rachelle.dubow@morganlewis.com; amelia.pennington@morganlewis.com
SIGNATURE(S)
Response Signature
Signature: /rachelledubow/ Date: 09/17/2019
Signatory's Name: Rachelle A. Dubow, Esq.
Signatory's Position: Attorney for Applicant, Massachusetts bar member
Signatory's Phone Number: 6179518939
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: RACHELLE A. DUBOW, ESQ.
MORGAN, LEWIS & BOCKIUS LLP
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
Mailing Address: Rachelle A. Dubow, Esq.
MORGAN, LEWIS & BOCKIUS LLP
ATTN: TMSU
ONE FEDERAL STREET
BOSTON, Massachusetts 02110
Serial Number: 88317908
Internet Transmission Date: Tue Sep 17 16:37:16 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019091716371676
5827-88317908-6104c7e2156af2d101ec7cde5b
e9d9cd695b333e33f9f32a7bec12a5de5f17121-
N/A-N/A-20190917155224687650