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. 88323544 SIMONS(Standard Characters, see http://uspto.report/TM/88323544/mark.png) has been amended as follows:

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

Refusal - Likelihood of Confusion: Applicant avers that the amendments to the specification of goods in the instant application render moot the likelihood of confusion refusal. As the Examining Attorney has noted, the wording SIMONS is a surname and therefore the registered marks are entitled to a very narrow scope of protection. The coexistence of the registered marks substantiates this fact. Thus, the differences in the marks and the differences in the goods are sufficient to avoid a likelihood of confusion. Applicant requests that the refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 014 for Accessories for men, women and children namely, jewellery and watches

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Accessories for men, women and children namely, belts, umbrellas, straps, cuff links, tie clips, sunglasses, glasses cases, snowboard goggles, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags, athletic bags, golf bags school bags, beach bags, sports bags, cloth bags, vinyl bags, all-purpose plastic bags, all-purpose bags for commercial use, pouch bags, purse-bags, handbags, key holders and eyeglass cases
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Accessories for men, women and children namely, belts, umbrellas, straps, cuff links, tie clips, sunglasses, glasses cases, snowboard goggles, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags, athletic bags, golf bags school bags, beach bags, sports bags, cloth bags, vinyl bags, all-purpose plastic bags, all-purpose bags for commercial use, pouch bags, purse-bags, handbags, key holders and eyeglass cases; Accessories for men, women and children namely, leather shoulder belts, umbrellas, all-purpose leather straps, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags for travel, athletic bags, school bags, beach bags, sports bags, cloth bags for travel, vinyl bags for travel, all-purpose plastic carrying bags, leather pouch bags, purse-bagsClass 018 for Accessories for men, women and children namely, leather shoulder belts, umbrellas, all-purpose leather straps, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags for travel, athletic bags, school bags, beach bags, sports bags, cloth bags for travel, vinyl bags for travel, all-purpose plastic carrying bags, leather pouch bags, purse-bags
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing for men, women and children namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear, blouses, sleeveless jackets, pulls, t-shirts, ski jackets, ski vests, ski pants, ski suits, ski jackets, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, raincoats, overcoats, coats, trench coats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, overalls, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties, neck warmers, hats, toques, hats, caps, visors, ear muffs, gloves, golf gloves, mittens, handkerchiefs, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves, scarves; nightwear for men, women and children namely, shirts and nightgowns, baby dolls, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips, petticoats, panties, bras, girdles and undergarments; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, loafers, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing for men, women and children namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear, blouses, sleeveless jackets, pulls, t-shirts, ski jackets, ski vests, ski pants, ski suits, ski jackets, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, raincoats, overcoats, coats, trench coats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, overalls, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties, neck warmers, hats, toques, hats, caps, visors, ear muffs, gloves, golf gloves, mittens, handkerchiefs, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves, scarves; Clothing for men, women and children, namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing in the nature of shirts, pants, dresses, sweaters and skirts, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear in the nature of shirts, pants, dresses, sweaters and skirts, sleeveless jackets, t-shirts, ski jackets, ski vests, ski pants, ski suits, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, overcoats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties as clothing, neck warmers as clothing, hats, toques, caps, visors being headwear, ear muffs, gloves, mittens, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves; nightwear for men, women and children namely, shirts and nightgowns, baby dolls, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips, petticoats, panties, bras, girdles and undergarments; nightwear for men, women and children, namely, shirts and nightgowns, baby doll pajamas, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips being underclothing, petticoats, panties, bras, girdles and undergarments; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, loafers, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties; belts; shoe strapsClass 025 for Clothing for men, women and children, namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing in the nature of shirts, pants, dresses, sweaters and skirts, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear in the nature of shirts, pants, dresses, sweaters and skirts, sleeveless jackets, t-shirts, ski jackets, ski vests, ski pants, ski suits, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, overcoats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties as clothing, neck warmers as clothing, hats, toques, caps, visors being headwear, ear muffs, gloves, mittens, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves; nightwear for men, women and children, namely, shirts and nightgowns, baby doll pajamas, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips being underclothing, petticoats, panties, bras, girdles and undergarments; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties; belts; shoe straps
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 014 ) for Sunglasses; cases for eyeglasses and sunglasses; snowboard goggles
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 022 for General utility bags for commercial use
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 024 for Textile handkerchiefs
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA716686 registered 06/16/2008 with a renewal date of __________ and an expiration date of 06/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: James R Menker. James R Menker of HOLLEY & MENKER, PA, is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US
The docket/reference number is 3000.0007.

The phone number is 904-247-2620.

The fax number is 2022801177.

The email address is eastdocket@holleymenker.com

The applicants proposed attorney information: James R Menker. Other appointed attorneys are James R Menker. James R Menker of Holley & Menker, PA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      PO Box 331937
      Atlantic Beach, Florida 32233
      United States
The docket/reference number is 3000.0007.

The phone number is 904-247-2620.

The fax number is 2022801177.

The email address is eastdocket@holleymenker.com

James R Menker 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 R MENKER. JAMES R MENKER of HOLLEY & MENKER, PA, is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US
The docket/reference number is 3000.0007.

The phone number is 904-247-2620.

The fax number is 2022801177.

The email address is eastdocket@holleymenker.com

The applicants proposed correspondence information: James R Menker. James R Menker of Holley & Menker, PA, is located at

      PO Box 331937
      Atlantic Beach, Florida 32233
      United States
The docket/reference number is 3000.0007.

The phone number is 904-247-2620.

The fax number is 2022801177.

The email address is eastdocket@holleymenker.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark 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.


FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /jmenker/     Date: 11/15/2019
Signatory's Name: James R Menker
Signatory's Position: Attorney of record, Florida bar member

Signatory's Phone Number: 9042472620

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 R MENKER
   HOLLEY & MENKER, PA
   
   PO BOX 331937
   ATLANTIC BEACH, Florida 32233
Mailing Address:    James R Menker
   Holley & Menker, PA
   PO Box 331937
   Atlantic Beach, Florida 32233
        
RAM Sale Number: 88323544
RAM Accounting Date: 11/15/2019
        
Serial Number: 88323544
Internet Transmission Date: Fri Nov 15 15:05:35 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911151505356
64782-88323544-700f2310e8da8731ab3a5f82d
09b24c9a8c865a32e9797e2b118eee915ec39-CC
-05332697-20191115143523458902