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. 88318004 PUBLIX(Standard Characters, see http://uspto.report/TM/88318004/mark.png) has been amended as follows:

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

The Office Action refused the registration of Applicant’s PUBLIX house mark on the grounds that the registration of a “full line” required additional evidence showing the large number and variety of goods within the class identified and that certain goods were worded indefinitely. In response, Applicant is amending the application and providing additional evidence of use.

First, Applicant agrees to amend its list of goods to identify the products at issue more specifically:  house mark for a full line of non-electric cutting instruments for household use, namely knives, scissors, slicers, choppers, peelers, cutlery, tweezers, corers, clippers, razors, can openers and trimmers other than paper trimmersin International Class 008; and house mark for a full line of hand-operated utensils for household use, namely bakeware, cooking pots, cooking pans, cooking spoons, pads, brushes, scrubbers, mops, serving utensils, dental utensils, bowls, strainers, scoops and sponges, but not including iced tea spoons and not including writing utensils in International Class 021.

Second, in order to demonstrate the breadth of those goods (among approximately 5,700 PUBLIX house mark products), Applicant submits additional evidence of use. Exhibit A to the accompanying declaration from Applicant’s president is a list from Applicant’s business records of goods within the scope of this application offered for sale under the PUBLIX house mark. Exhibits B though G2 are images showing use of PUBLIX on the full line of products listed in this application. These exhibits show that PUBLIX is used with at least 284 items within the scope of this application. These exhibits, therefore, demonstrate that PUBLIX is used on a full line of goods within the relevant classes. See TMEP § 1402.03(c). The Office has approved registration of house marks for a “full line” of products based upon similar evidence. See U.S. Reg. No. 4,578,249 (registration of PIGGLY WIGGLY as a house mark for a full line of food products).

Finally, to address the Office Action’s concern that some goods might fall within other classes, Applicant proposes an amendment expressly excluding “paper trimmers, iced tea spoons and writing utensils” from this application. See, e.g., Reg. No. 4,024,405 (registration of a house mark for full line of pharmaceuticals for medical purposes, but excluding dietary supplements and edible flour).

Therefore, and based upon the evidence being filed with this response, Applicant respectfully requests that the refusal be withdrawn and PUBLIX be approved for publication as a house mark for the full line of goods as amended. The Examining Attorney is invited to contact Applicant’s counsel with any questions.

EVIDENCE
Evidence in the nature of a declaration from Applicant's president with exhibits (namely, a list of PUBLIX house mark products in the relevant classes and images showing use of PUBLIX on the full line of products shown in the application) has been attached.
Original PDF file:
evi_4720610779-20191105084041805418_._ROA_Exhibits.pdf
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for house mark for a full line of non-electric cutting instruments for household use
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/07/1996 and first used in commerce at least as early as 06/07/1996 , and is now in use in such commerce.

Proposed:
Tracked Text Description: house mark for a full line of non-electric cutting instruments for household use; house mark for a full line of non-electric cutting instruments for household use, namely knives, scissors, slicers, choppers, peelers, cutlery, tweezers, corers, clippers, razors, can openers and trimmers other than paper trimmersClass 008 for house mark for a full line of non-electric cutting instruments for household use, namely knives, scissors, slicers, choppers, peelers, cutlery, tweezers, corers, clippers, razors, can openers and trimmers other than paper trimmers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/07/1996 and first used in commerce at least as early as 06/07/1996 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for house mark for a full line of hand-operated utensils for household use
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/07/1996 and first used in commerce at least as early as 06/07/1996 , and is now in use in such commerce.

Proposed:
Tracked Text Description: house mark for a full line of hand-operated utensils for household use; house mark for a full line of hand-operated utensils for household use, namely bakeware, cooking pots, cooking pans, cooking spoons, pads, brushes, scrubbers, mops, serving utensils, dental utensils, bowls, strainers, scoops and sponges, but not including iced tea spoons and not including writing utensilsClass 021 for house mark for a full line of hand-operated utensils for household use, namely bakeware, cooking pots, cooking pans, cooking spoons, pads, brushes, scrubbers, mops, serving utensils, dental utensils, bowls, strainers, scoops and sponges, but not including iced tea spoons and not including writing utensils
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/07/1996 and first used in commerce at least as early as 06/07/1996 , and is now in use in such commerce.
The applicant's current attorney information: James B. Lake. James B. Lake of THOMAS & LOCICERO PL, is located at

      601 SOUTH BOULEVARD
      TAMPA, Florida 33606
      US
The docket/reference number is 15.1.

The phone number is 813-984-3060.

The fax number is 813.984.3070.

The email address is trademarks@tlolawfirm.com

The applicants proposed attorney information: James B. Lake. Other appointed attorneys are Carol Jean LoCicero. James B. Lake of Thomas & LoCicero PL, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      601 South Boulevard
      Tampa, Florida 33606
      United States
The docket/reference number is 15.1.

The phone number is 813-984-3060.

The fax number is 813.984.3070.

The email address is trademarks@tlolawfirm.com

James B. Lake 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: JAMES B. LAKE. JAMES B. LAKE of THOMAS & LOCICERO PL, is located at

      601 SOUTH BOULEVARD
      TAMPA, Florida 33606
      US
The docket/reference number is 15.1.

The phone number is 813-984-3060.

The fax number is 813.984.3070.

The email address is trademarks@tlolawfirm.com

The applicants proposed correspondence information: James B. Lake. James B. Lake of Thomas & LoCicero PL, is located at

      601 South Boulevard
      Tampa, Florida 33606
      United States
The docket/reference number is 15.1.

The phone number is 813-984-3060.

The fax number is 813.984.3070.

The email address is trademarks@tlolawfirm.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_4720610779-084041805_._Signed_OA_dec.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Mark R. Irby
Signatory's Position: President

Response Signature
Signature: /James B. Lake/     Date: 11/05/2019
Signatory's Name: James B. Lake
Signatory's Position: Attorney of Record, FL bar member

Signatory's Phone Number: 813.984.3060

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:    JAMES B. LAKE
   THOMAS & LOCICERO PL
   
   601 SOUTH BOULEVARD
   TAMPA, Florida 33606
Mailing Address:    James B. Lake
   Thomas & LoCicero PL
   601 South Boulevard
   Tampa, Florida 33606
        
Serial Number: 88318004
Internet Transmission Date: Tue Nov 05 11:18:01 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019110511180127
9719-88318004-7009c1449c9fcfc89736dc6e94
3b436b5207231927a83cff1e24e8782841c95dde
f-N/A-N/A-20191105084041805418