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)

---

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. 88336708 DREAMIT(Standard Characters, see http://uspto.report/TM/88336708/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 020 for pillows; cushions; non-metal baskets
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 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1949284 filed 03/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: pillows; cushions; non-metal baskets; throw pillowsClass 020 for pillows; cushions; throw pillows
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 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1949284 filed 03/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for bedding, namely, pillowcases, blankets, comforters, duvet covers, sheets, fitted sheets, throw pillows, throw blankets, bed skirts, crib skirts
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 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1949284 filed 03/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: bedding, namely, pillowcases, blankets, comforters, duvet covers, sheets, fitted sheets, throw pillows, throw blankets, bed skirts, crib skirts; bedding, namely pillowcases, bed blankets, comforters, duvet covers, bed sheets, fitted bed sheets, throw blankets, bed skirts, crib skirtsClass 024 for bedding, namely pillowcases, bed blankets, comforters, duvet covers, bed sheets, fitted bed sheets, throw blankets, bed skirts, crib skirts
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 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1949284 filed 03/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

The applicant's current attorney information: Scott J. Slavick. Scott J. Slavick of BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG LLP, is located at

      200 W. MADISON STREET, SUITE 3900
      CHICAGO, Illinois 60606
      US
The docket/reference number is SOSH-0007.

The phone number is 312-984-3100.

The fax number is 312-984-3150.

The email address is trademarks@bfkn.com

The applicants proposed attorney information: Scott J. Slavick. Other appointed attorneys are Wendi E. Sloane, Thomas M. Gniot, Karyn L. Doerfler, Sharon Calhoun, and David Bluestone. Scott J. Slavick of BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG 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

      200 W. MADISON STREET, SUITE 3900
      CHICAGO, Illinois 60606
      United States
The docket/reference number is SOSH-0007.

The phone number is 312-984-3100.

The fax number is 312-984-3150.

The email address is trademarks@bfkn.com

Scott J. Slavick 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: SCOTT J. SLAVICK. SCOTT J. SLAVICK of BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG LLP, is located at

      200 W. MADISON STREET, SUITE 3900
      CHICAGO, Illinois 60606
      US
The docket/reference number is SOSH-0007.

The phone number is 312-984-3100.

The fax number is 312-984-3150.

The email address is trademarks@bfkn.com

The applicants proposed correspondence information: Scott J. Slavick. Scott J. Slavick of BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG LLP, is located at

      200 W. MADISON STREET, SUITE 3900
      CHICAGO, Illinois 60606
      United States
The docket/reference number is SOSH-0007.

The phone number is 312-984-3100.

The fax number is 312-984-3150.

The email address is trademarks@bfkn.com

SIGNATURE(S)
Response Signature
Signature: /Scott J. Slavick/     Date: 08/22/2019
Signatory's Name: Scott J. Slavick
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312-984-3100

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:    SCOTT J. SLAVICK
   BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG LLP
   
   200 W. MADISON STREET, SUITE 3900
   CHICAGO, Illinois 60606
Mailing Address:    Scott J. Slavick
   BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG LLP
   200 W. MADISON STREET, SUITE 3900
   CHICAGO, Illinois 60606
        
Serial Number: 88336708
Internet Transmission Date: Thu Aug 22 15:59:41 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019082215594143
2373-88336708-61032d4ea609c174764ea75cb2
b26897b5b2108267a5a234eaf9b4a3be13872a2-
N/A-N/A-20190822155752497616