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. 88357327 EXPLORER(Standard Characters, see http://uspto.report/TM/88357327/mark.png) has been amended as follows:

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

UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	Central National-Gottesman, Inc.
Mark:	EXPLORER Serial No. 88/357,327
Filing Date:	March 26, 2019
Law Office:	115
Examining Attorney:	James Hill

OFFICE ACTION RESPONSE

Applicant Central National-Gottesman, Inc. (the “Applicant”), makes this submission in response to the Office Action dated June 11, 2019, with respect to Serial No. 88/357,327 for EXPLORER (“the Applicant’s Mark”) for goods in International Classes 16 and 17 (the “Application”). 

 

The Examining Attorney refused registration finding a likelihood of confusion with Registration No. 5,718,727 for the designation EXPLORERS LET YOUR JOURNEY BEGIN (stylized) (the “Cited Registration”) under Section 2(d) of the Trademark Act, and has advised of a possible likelihood of confusion refusal based on Serial Nos. 87/027,930 and 88/255,285, for the designations EXPLORER ACADEMY and EXPLORER DREAM, respectively (“Cited Prior Pending Applications”).  Serial No. 87/027,930 issued to registration as Registration No. 5,932,312 on December 10, 2019.  Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal, for the reasons stated below.

 

 

INFORMALITIES

Identification of Goods

Applicant respectfully requests that the goods be amended as follows:

Class 16: paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags

Class 17: adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial or commercial purposes

 

Prior Registration

Applicant is the owner of Registration No. 3,647,519 for the mark EXPLORER in International Class 16 (hereafter, “Applicant’s Prior Registration”). 

 

ARGUMENT

 

The Examining Attorney cited the following registrations and prior pending applications for goods in International Class 16:

Mark/Owner	Reg. No./ Serial No.	Identification
EXPLORERS LET YOUR JOURNEY BEGIN (stylized, in color, and with Arabic wording) Owner:  Etihad Airways	5,718,727	Class 16:  Printed matter for use in children's activity packs, namely, puzzles, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, posters, books, magazines and guides featuring travel information, cartoon prints and strips, pictures and photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, arts and crafts paint kits; publications in the nature of magazines, newsletters, letters, flyers and brochures aimed at children; books in the nature of fiction and non-fiction in the field of travel and children's activities; calendars; posters; photographs; paintbrushes; printed instructional and teaching material in the field of travel; decalcomanias; coloring books; children's activity books; pens, pencils, pencil cases, erasers, crayons, markers, color pencils, painting sets for children, chalk and chalkboards; notepads; adhesive-backed letters and numbers for use in making posters and collages; stickers and transfers; packaging materials made of paper
EXPLORER ACADEMY   Owner:  National Geographic Society	5,932,312	Class 16:  stickers; books featuring topics in the fields of science, natural history, history, geography, archeology, ecology, biology, astronomy, geology, economy, meteorology, active sports, exploration, adventure, travel, and social studies
EXPLORER DREAM   Owner: Dream IP Limited	88/255,285	Class 16:  Paper, cardboard and goods made from these materials, namely, boxes of cardboard, boxes of paper, coasters of paper, handkerchiefs of paper, hygienic paper, table napkins of paper, packing, cushioning, and stuffing materials of paper or cardboard, stationery, placards of paper or cardboard, signboards of paper, signboards of cardboard, cardboard tubes; printed matter, namely, coasters of paper, handkerchiefs of paper, hygienic paper, table napkins of paper, stationery, placards of paper, placards of cardboard, signboards of paper, signboards of cardboard, cardboard tubes; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, stationery, placards of paper, placards of cardboard, signboards of paper or cardboard; paint brushes; typewriters and office requisites, namely, folders, punchers, staplers, paper clips, stamps, ink pads; paper models for use in teaching; natural science teaching aids; plastic materials for packaging, namely, bags of plastic for packaging, plastic film for packaging; printers' type; printing blocks

 

Registration No. 5,718,727 also covers goods in Class 28 and Serial No. 88/255,285 covers goods and services in Classes 9, 25, 28, 39, 41, and 43. Although the refusal and possible refusal is not limited to Class 16, Applicant presumes these other goods/services are not at issue here.

Applicant’s Prior Registration is for the same mark, EXPLORER, and covers the following goods in International Class 16:

Paper for commercial and digital printing, paper for writing, copying, and printing, bond paper, bristol paper, glassine paper, offset paper, paper board

Applicant’s Prior Registration was not cited as confusingly similar to the Cited Registration or the Cited Prior Pending Applications.  Certainly if Applicant’s Prior Registration is not confusingly similar to the Cited Registration or the Cited Prior Pending Applications, there can be no likelihood of confusion with respect to the Cited Registration or the Cited Prior Pending Applications.  The goods in the Cited Registration are even closer to those in Applicant’s Prior Registration than they are to those in the Application (e.g., “stationary” versus “paper for writing” or “paper” versus “paper for commercial and digital printing, paper for writing…”).

Serial No. 87/027930 was narrowed to a smaller set of goods in Class 16 when the Statement of Use was filed on October 24, 2019. Applicant respectfully submits that this registration does not cover similar goods to the Application. 

Furthermore, if the Cited Registration and the Cited Prior Pending Applications can co-exist along with each other, and Applicant’s Prior Registration, certainly Applicant’s Mark can join the field without any likelihood of confusion.  The additional elements in the Cited Registration and Cited Prior Pending Applications were determined by the Office to be sufficient to distinguish them from Applicant’s Prior Registration, thus the same must be true with respect to the Application.

CONCLUSION

 

For the reasons stated above, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d), and approve the Application for publication.

 

 

 

Dated: New York, New York
December 10, 2019

Respectfully submitted,

MOSES & SINGER LLP

By:  /Deborah L. Shapiro/

Deborah L. Shapiro
405 Lexington Avenue
New York, New York 10174-1299
Tel: 212-554-7800
Fax: 212-554-7700

Attorneys for Central National-Gottesman, Inc.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging
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: Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bagsClass 016 for Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Adhesive tape for sealing cartons for industrial or commercial use; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film; poly bags
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: Adhesive tape for sealing cartons for industrial or commercial use; plastic film for wrapping; biodegradable plastic film for use in laminating paper; plastic film for packaging; poly-olefin film with a rubber adhesive used to protect surfaces; food wrapping plastic film; poly-olefin shrink film for industrial purposes; poly-olefin shrink film; poly bagsClass 017 for Adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial purposes
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: Debroah L. Shapiro. Debroah L. Shapiro of MOSES & SINGER LLP, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      US
The docket/reference number is 003602-0199.

The phone number is 212-554-7800.

The fax number is 212-554-7700.

The email address is trademarks@mosessinger.com

The applicants proposed attorney information: Debroah L. Shapiro. Debroah L. Shapiro of MOSES & SINGER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      United States
The docket/reference number is 003602-0199.

The phone number is 212-554-7800.

The fax number is 212-554-7700.

The email address is trademarks@mosessinger.com

Debroah L. Shapiro 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: DEBROAH L. SHAPIRO. DEBROAH L. SHAPIRO of MOSES & SINGER LLP, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      US
The docket/reference number is 003602-0199.

The phone number is 212-554-7800.

The fax number is 212-554-7700.

The email address is trademarks@mosessinger.com

The applicants proposed correspondence information: Debroah L. Shapiro. Debroah L. Shapiro of MOSES & SINGER LLP, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      United States
The docket/reference number is 003602-0199.

The phone number is 212-554-7800.

The fax number is 212-554-7700.

The email address is trademarks@mosessinger.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3647519.


SIGNATURE(S)
Response Signature
Signature: /Deborah L. Shapiro/     Date: 12/10/2019
Signatory's Name: Deborah L. Shapiro
Signatory's Position: Authorized attorney, New York bar member

Signatory's Phone Number: 212-554-7800

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:    DEBROAH L. SHAPIRO
   MOSES & SINGER LLP
   THE CHRYSLER BUILDING
   405 LEXINGTON AVENUE
   NEW YORK, New York 10174
Mailing Address:    Debroah L. Shapiro
   MOSES & SINGER LLP
   THE CHRYSLER BUILDING
   405 LEXINGTON AVENUE
   NEW YORK, New York 10174
        
Serial Number: 88357327
Internet Transmission Date: Tue Dec 10 18:37:02 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019121018370249
4145-88357327-7004fa777a3cc4174ba34df6e1
5cb201ad29adb72c8e78ae69aa6653381b63d9-N
/A-N/A-20191210182715098259