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. 88356507 GLOBAL INDUSTRIAL(Standard Characters, see http://uspto.report/TM/88356507/mark.png) has been amended as follows:

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

The examining attorney has refused registration under Section 2(e)(1) on the grounds that the term "GLOBAL"merely describes a feature or characteristic of Applicant's goods. Applicant respectfully disagrees. The term "Global" in the mark may convey meaning about Applicant, namely the scope of Applicant's business, but it does not convey meaning about the goods identified in the application themselves. More specifically, the term "GLOBAL" does not convey any ingredient, quality, characteristic, feature, function, purpose or use of baby changing tables. The term is therefore not merely descriptive of the goods. Accordingly, Applicant respectfully requests that the refusal under Section 2(e)(1) be withdrawn. Additionally, the examining attorney has refused registration under Section 2(d) based on a likelihood of confusion with the marks in Registration Nos. 4093471 and 4093472, both covering furniture. Applicant respectfully disagrees. Applicant's goods are not furniture. Furniture is defined as "objects that can be moved, such as tables, chairs and beds that are put into a house or an office to make it suitable for living or working in" See Oxford Advanced Learners Dictionary, submitted herewith. Applicant has amended its identification of goods to clarify that the baby changing tables that it intends to use its mark with are mounted to, and are thereby fixed to a wall, for use in bathrooms or other public places. Indeed, the purpose of Applicant's goods is not to make a home or office suitable for living or working in, but to provide convenience to parents who are away from their homes and offices. As such, they are not movable, and are not used in a home or office. Thus, Applicant's goods, as amended, are not furniture, and would therefore not be included in the goods identified in the cited Registrations, nor would such different goods be perceived by consumers as originating from a common source. Accordingly, there would not be a likelihood of confusion with the Registrant's marks. Applicant therefore respectfully requests that the Section 2(d) refusal be withdrawn.

EVIDENCE
Evidence in the nature of Print of online dictionary definition from Oxford Advanced Learners Dictionary has been attached.
Original PDF file:
evi_414156178-20191105112525452591_._Oxford_Definition_of_Furniture.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Baby Changing Tables
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.

Proposed:
Tracked Text Description: Baby Changing Tables; Wall-mounted baby changing tables, for use in public bathrooms or other public spaces.Class 020 for Wall-mounted baby changing tables, for use in public bathrooms or other public spaces.
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.

The applicant's current attorney information: Michael F. Sarney. Michael F. Sarney of MORITT HOCK & HAMROFF LLP, is located at

      39TH FLOOR
      1407 BROADWAY
      NEW YORK, New York 10018
      US
The docket/reference number is N-1165.1.435.

The phone number is 212-239-2000.

The email address is msarney@moritthock.com

The applicants proposed attorney information: Michael F. Sarney. Michael F. Sarney of MORITT HOCK & HAMROFF LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      39TH FLOOR
      1407 BROADWAY
      NEW YORK, New York 10018
      United States
The docket/reference number is N-1165.1.435.

The phone number is 212-239-2000.

The email address is msarney@moritthock.com

Michael F. Sarney 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: MICHAEL F. SARNEY. MICHAEL F. SARNEY of MORITT HOCK & HAMROFF LLP, is located at

      39TH FLOOR
      1407 BROADWAY
      NEW YORK, New York 10018
      US
The docket/reference number is N-1165.1.435.

The phone number is 212-239-2000.

The email address is msarney@moritthock.com; trademark@moritthock.com

The applicants proposed correspondence information: Michael F. Sarney. Michael F. Sarney of MORITT HOCK & HAMROFF LLP, is located at

      39TH FLOOR
      1407 BROADWAY
      NEW YORK, New York 10018
      United States
The docket/reference number is N-1165.1.435.

The phone number is 212-239-2000.

The email address is msarney@moritthock.com

SIGNATURE(S)
Response Signature
Signature: /mfs/     Date: 11/05/2019
Signatory's Name: Michael F. Sarney
Signatory's Position: Attorney of record, New York bar member

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:    MICHAEL F. SARNEY
   MORITT HOCK & HAMROFF LLP
   39TH FLOOR
   1407 BROADWAY
   NEW YORK, New York 10018
Mailing Address:    Michael F. Sarney
   MORITT HOCK & HAMROFF LLP
   39TH FLOOR
   1407 BROADWAY
   NEW YORK, New York 10018
        
Serial Number: 88356507
Internet Transmission Date: Tue Nov 05 11:49:54 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20191105114954319
854-88356507-70076e3247b184653fce41492af
9b27ae69993374cc9c536db3e66523f34b414d4-
N/A-N/A-20191105112525452591