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. 88332162 THE INKEY LIST (Stylized and/or with Design, see http://uspto.report/TM/88332162/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; cosmetic preparations for skin care; skin balms; skin care cosmetics; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels and bubble bath; scented body lotions, creams and butters; scented moisturising skin cream; moisturisers; body lotions, creams and butters; baby lotion; baby oil; moisturising creams; scented skin soap; body oil; cleansing lotions; face, lip and cheek make-up; face powder; face glitter; glitter for cosmetic purposes; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; epilatory strips; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eyeliner brushes, eye creams, eye gels, eye gloss, eye balms; eyebrow colours; eyebrow cosmetics; eyebrow pencils; false eyebrows; false eyelashes; highlighter; masks; cleansers; skin toners; skin clarifiers; exfoliators; foundation make-up; blusher; compacts; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; make-up kits; non-medicated beauty preparations; non-medicated skin care beauty products; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions and serums; anti-aging treatments; foundation for the face; hair care products, shampoo, hair conditioners, hair mouse, hair moulding creams, hair gel and hair spray; dry shampoos; all in one bath and hair cleansers; mouthwash; nail care preparations, nail polish, nail straighteners and nail polish remover; false nails; shaving cream, shaving gel, shaving kits, after-shave preparations, after-shave lotion; shoe polish; depilatory preparations; personal deodorant; antiperspirants; potpourri; nail care preparations; nail varnish and remover thereof; sun tanning preparations; sunscreen; sun protection oils, lotions, creams and gels; after-sun oils, lotions, creams and gels; cosmetic preparations for skin tanning; artificial tanning preparations; tanning lotions, tanning gels, tanning oils; talcum powder; terpenes; tissues impregnated with cosmetic lotions; toilet water; toiletries; transfers (decorative -) for cosmetic purpose; varnish-removing preparations; washing preparations; preparations for the hair and for the care of the skin (non-medicated); toiletries for babies and infants (non-medicated); tooth paste and tooth gel; tooth whitening creams, gels and pastes; tooth bleaching preparations; petroleum jelly (for cosmetic purposes); pre-impregnated wipes and towels with personal cleansing and/or cosmetic lotions; pre-impregnated wipes and towels for hygienic purposes (personal use); cotton sticks; cotton wool; baby wipes; cosmetic dyes; hair dyes; shoe wax; cleaning face masks for the face; concealers; lip liner; sun bronzers; make up for contouring the face; make up primer; make up setting spray
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3319706 registered 09/21/2018 with a renewal date of __________ and an expiration date of 06/22/2028 ], 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: Bleaching preparations and other substances for laundry use; Bleaching preparations and other substances for laundry use, namely, laundry detergents; cleaning, polishing, scouring and abrasive preparations; soaps; non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; fragrances for personal use; massage oils; cosmetic preparations for skin care; skin balms; non-medicated balms for use on skin; skin care cosmetics; skin care preparations; non-medicated skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels and bubble bath; scented body lotions, creams and butters; scented moisturising skin cream; moisturisers; skin moisturisers; body lotions, creams and butters; body lotions, creams and body butters; baby lotion; baby oil; moisturising creams; scented skin soap; body oil; cleansing lotions; skin cleansing lotion; face, lip and cheek make-up; face powder; face glitter; glitter for cosmetic purposes; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; perfumed shimmer sticks in the nature of cosmetics; epilatory strips; epilatory strips, eye shadow, eye pencils, mascara, eye make-up, eye liners, eye creams, eye gels, eye gloss, non-medicated eye balms; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eyeliner brushes, eye creams, eye gels, eye gloss, eye balms; eyebrow colours; eyebrow cosmetics; eyebrow pencils; false eyebrows; false eyelashes; highlighter, namely hair highlighting spray; highlighter; cosmetic masks; masks; cleansers for intimate personal hygiene purposes, non-medicated; cleansers; skin toners; skin clarifiers; exfoliators, namely, exfoliant creams; exfoliators; foundation make-up; blusher; cosmetics, namely, compacts; compacts; make up remover; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products, namely, cleaning lotions, creams and balms, essences, toners, serums, treatments, masks, eye creams, moisturisers and SPF creams; beauty care products; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; make-up kits comprised of non-medicated cosmetics, eg, lipstick, lip gloss; make-up kits; non-medicated beauty preparations; non-medicated skin care beauty products, namely, cleaning lotions, creams and balms, essences, toners, serums, treatments, masks, eye creams, moisturisers and SPF creams; non-medicated skin care beauty products; non-medicated skin care products for personal use, namely, face, eye and lip moisturisers; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions for cosmetic purposes and beauty serums; lotions and serums; anti-ageing treatments, namely, creams, toner, moisturiser; anti-aging treatments; foundation for the face; hair care products, namely, shampoo, hair conditioners, hair mousse, hair moulding creams, hair gel and hairspray; hair care products, shampoo, hair conditioners, hair mouse, hair moulding creams, hair gel and hair spray; dry shampoos; all-in-one bath and hair cleansers in the nature of three-in-one non-medicated soap bars for use as a soap, shampoo and conditioner; all in one bath and hair cleansers; non-medicated mouthwash; mouthwash; nail care preparations, nail polish, nail straighteners and nail polish remover; false nails; shaving cream; shaving cream, shaving gel, shaving kits, after-shave preparations, after-shave lotion; shaving gel; shaving kits comprised of shaving gels, shaving creams, shaving balms; after-shave cream; after-shave lotion; shoe polish; potpourri; depilatory preparations; personal deodorant; antiperspirants; pot pourri; sunscreen; nail care preparations; sun protection oils, lotions, creams and gels; nail varnish and remover thereof; after-sun oils, lotions, creams and gels; sun tanning preparations; sunscreen preparations; non-medicated sun protection oils, lotions, creams and gels; after-sun oils, lotion, creams and gels; cosmetic preparations for skin tanning; terpenes; artificial tanning preparations; tanning lotions, tanning gels, tanning oils; talcum powder; toiletries; terpenes being essential oils; transfers (decorative -) for cosmetic purpose; tissues impregnated with cosmetic lotions; toilet water; non medicated toiletry preparations; preparations for the hair and for the care of the skin (non-medicated); decorative transfers for cosmetic purposes; toiletries for babies and infants (non-medicated); varnish-removing preparations; tooth paste and tooth gel; washing preparations; non medicated preparations for the hair and for the care of the skin; non-medicated toiletries for babies and infants; petroleum jelly (for cosmetic purposes); toothpaste and tooth gel; pre-impregnated wipes and towels with personal cleansing and/or cosmetic lotions; tooth whitening creams, gels and pastes; pre-impregnated wipes and towels for hygienic purposes (personal use); tooth bleaching preparations; cotton sticks; petroleum jelly for cosmetic purposes; cotton wool; pre impregnated wipes and towels for personal cleansing and cosmetic lotions; baby wipes; pre impregnated wipes and towels for hygienic purposes; cosmetic dyes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; baby wipes impregnated with cleaning preparations; cleaning face masks for the face; cosmetic dyes in the nature of hair dyes; concealers; hair dyes; shoe wax; facial concealer; make up for contouring the face; lip liner; make up primer; sun bronzers; make up setting spray; make-up for contouring the face; make-up primer; make-up setting spray.'Class 003 for Bleaching preparations and other substances for laundry use, namely, laundry detergents; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; eau de parfum; eau de toilette; cologne; fragrances for personal use; massage oils; cosmetic preparations for skin care; non-medicated balms for use on skin; skin care cosmetics; non-medicated skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels and bubble bath; scented body lotions, creams and butters; scented moisturising skin cream; skin moisturisers; body lotions, creams and body butters; baby lotion; baby oil; moisturising creams; scented skin soap; body oil; skin cleansing lotion; face, lip and cheek make-up; face powder; face glitter; glitter for cosmetic purposes; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks in the nature of cosmetics; epilatory strips, eye shadow, eye pencils, mascara, eye make-up, eye liners, eye creams, eye gels, eye gloss, non-medicated eye balms; eyebrow colours; eyebrow cosmetics; eyebrow pencils; false eyebrows; false eyelashes; highlighter, namely hair highlighting spray; cosmetic masks; cleansers for intimate personal hygiene purposes, non-medicated; skin toners; skin clarifiers; exfoliators, namely, exfoliant creams; foundation make-up; blusher; cosmetics, namely, compacts; make up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products, namely, cleaning lotions, creams and balms, essences, toners, serums, treatments, masks, eye creams, moisturisers and SPF creams; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; make-up kits comprised of non-medicated cosmetics, eg, lipstick, lip gloss; non-medicated beauty preparations; non-medicated skin care beauty products, namely, cleaning lotions, creams and balms, essences, toners, serums, treatments, masks, eye creams, moisturisers and SPF creams; non-medicated skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions for cosmetic purposes and beauty serums; anti-ageing treatments, namely, creams, toner, moisturiser; foundation for the face; hair care products, namely, shampoo, hair conditioners, hair mousse, hair moulding creams, hair gel and hairspray; dry shampoos; all-in-one bath and hair cleansers in the nature of three-in-one non-medicated soap bars for use as a soap, shampoo and conditioner; non-medicated mouthwash; nail care preparations, nail polish, nail straighteners and nail polish remover; false nails; shaving cream; shaving gel; shaving kits comprised of shaving gels, shaving creams, shaving balms; after-shave cream; after-shave lotion; shoe polish; depilatory preparations; personal deodorant; antiperspirants; pot pourri; nail care preparations; nail varnish and remover thereof; sun tanning preparations; sunscreen preparations; non-medicated sun protection oils, lotions, creams and gels; after-sun oils, lotion, creams and gels; cosmetic preparations for skin tanning; artificial tanning preparations; tanning lotions, tanning gels, tanning oils; talcum powder; terpenes being essential oils; tissues impregnated with cosmetic lotions; toilet water; non medicated toiletry preparations; decorative transfers for cosmetic purposes; varnish-removing preparations; washing preparations; non medicated preparations for the hair and for the care of the skin; non-medicated toiletries for babies and infants; toothpaste and tooth gel; tooth whitening creams, gels and pastes; tooth bleaching preparations; petroleum jelly for cosmetic purposes; pre impregnated wipes and towels for personal cleansing and cosmetic lotions; pre impregnated wipes and towels for hygienic purposes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; baby wipes impregnated with cleaning preparations; cosmetic dyes in the nature of hair dyes; hair dyes; shoe wax; facial concealer; lip liner; sun bronzers; make-up for contouring the face; make-up primer; make-up setting spray.'
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3319706 registered 09/21/2018 with a renewal date of __________ and an expiration date of 06/22/2028 ], 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 applicant's current attorney information: Michelle E. Tochtrop. Michelle E. Tochtrop of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114
      US
The docket/reference number is BEBL-60638.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed attorney information: Michelle E. Tochtrop. Other appointed attorneys are All attorneys associated with Pearne & Gordon LLP, including, but not limited to, the following attorneys: Joseph J. Corso, Howard G. Shimola, Jeffrey J. Sopko, John P. Murtaugh, James M. Moore, Michael W. Garvey, Richard A. Sharpe, Deborah L. Corpus, Steven J. Solomon, Bryan M. Gallo, James G. Chrisman, Gregory M. York, Nobuhiko Sukenaga, Michelle E. Tochtrop, Thaddeus A. Zalenski. Michelle E. Tochtrop of PEARNE & GORDON 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

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is BEBL-60638.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

Michelle E. Tochtrop 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: MICHELLE E. TOCHTROP. MICHELLE E. TOCHTROP of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114
      US
The docket/reference number is BEBL-60638.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com; mtochtrop@pearne.com; rkoll@pearne.com

The applicants proposed correspondence information: Michelle E. Tochtrop. Michelle E. Tochtrop of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is BEBL-60638.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com; mtochtrop@pearne.com; rkoll@pearne.com

SIGNATURE(S)
Response Signature
Signature: /michelleetochtrop/     Date: 11/22/2019
Signatory's Name: Michelle E. Tochtrop
Signatory's Position: Attorney of Record/Ohio Bar Member

Signatory's Phone Number: 216-579-1700

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:    MICHELLE E. TOCHTROP
   PEARNE & GORDON LLP
   
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114
Mailing Address:    Michelle E. Tochtrop
   PEARNE & GORDON LLP
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114
        
Serial Number: 88332162
Internet Transmission Date: Fri Nov 22 11:35:36 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191122113536
586448-88332162-7004e45c3697ee13f65545a2
712e7b38decaf573a84b739f287aa3ee62224f76
-N/A-N/A-20191122111559937542