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. 88358769 HILO (Stylized and/or with Design, see http://uspto.report/TM/88358769/mark.png) has been amended as follows:

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

For the Trademark "Hilo" I ask that you reconsider your refusals. The three of them being section 2(d) likelihood of confusion, clarification of identification services in class 35 only, and lastly, clarification of color claim. For the partial refusal of section 2(b). After examining the mark, as well as the mark "Hilo Hattie" mark that was presented by the officer it seems that the only similarity in these two marks is the word hilo. Looking at the "Hilo Hattie" Trademark on the trademark search site TESS showed that Hilo Hattie's trademark is a typed drawing, meaning this is a completely different looking trademark. Hilo Apparel's Trademark is a structured black square with the word Hilo typed inside, while Hilo Hattie has a drawing with special text (a flower with cursive Hilo Hattie). Visually speaking these trademarks are different, but literally as well. "Hilo" is the only word that is in the trademark for Hilo Apparel. Oppositely so, "Hilo Hattie" includes two words, Hattie, relating to the stores geographical location. This being so, for your first refusal of the "Hilo" for Hilo Apparel. Your second listed argument was regarding class 35. Stating that it needed clarification for the class 25 stating that Hilo Apparel is in On-line wholesale and retail store services featuring clothing, swimwear, and jewelry; Online retail for apparel and accessories, including, store services featuring in-store order pickup. I would agree now take class 35 off the list of classes. Though for many wholesale orders Hilo Apparel is dealing with shipping and merchandising, this is by no means what Hilo Apparel's goods and services for sale are. Considering we do not offer services of advertising or merchandising. The thirds partial argument is pertaining clarification of colors in the trademark. The "Hilo" trademark is a black square with the word "hilo" centered in calibri font in the color black. The background of the square is white. This is what the trademark is and will look like. The only colors in this trade mark are black and white.

EVIDENCE
Evidence in the nature of The two attached pieces of evidence are clear examples showing the trade mark, in its correct colors. Being exhibited in use, surrounded by other colors. And also shown on a white background, showing its contrast, as well as black and white color. The file named "merchandising tag" is a tag that is printed and hung on the exterior of clothing when being sold to customers. The second file is the logo on a blank white sheet. This shows the mark, as described with nothing but black and white coloring. has been attached.
Original PDF file:
evi_73184237105-20190611101230525920_._merchandising_tag_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_73184237105-20190611101230525920_._HILO_LOGO.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 014 for Jewelry; Rings made in whole or significant part of metals consisting of silver, gold, platinum

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for On-line wholesale and retail store services featuring clothing, swimwear, and jewelry; Online retail for apparel and accessories store services featuring in-store order pickup

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Bumper stickers
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 06/16/2017 and first used in commerce at least as early as 03/02/2018 , and is now in use in such commerce.

Proposed: Class 016 for Bumper stickers
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 06/16/2017 and first used in commerce at least as early as 03/02/2018 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Pouches for holding make-up, keys and other personal items; Fabric pouches sold empty that may be used to hold makeup, toiletries; Leather bags; Waist pouches
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: Class 018 for Pouches for holding make-up, keys and other personal items; Fabric pouches sold empty that may be used to hold makeup, toiletries; Leather bags; Waist pouches
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 025 for Swim wear for gentlemen and ladies; Bottoms as clothing; Bottoms as clothing for men and women; Dresses for women; Headbands for clothing; Headwear for men and women; Hoodies; Shifts as clothing; Shirts for men and women; Shorts for men and women; T-shirts for men and women; Tops as clothing; Tops as clothing for men and women; Wearable garments and clothing, namely, shirts
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 06/16/2017 and first used in commerce at least as early as 03/02/2018 , and is now in use in such commerce.

Proposed: Class 025 for Swim wear for gentlemen and ladies; Bottoms as clothing; Bottoms as clothing for men and women; Dresses for women; Headbands for clothing; Headwear for men and women; Hoodies; Shifts as clothing; Shirts for men and women; Shorts for men and women; T-shirts for men and women; Tops as clothing; Tops as clothing for men and women; Wearable garments and clothing, namely, shirts
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 06/16/2017 and first used in commerce at least as early as 03/02/2018 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Isabella Ocampo/     Date: 06/12/2019
Signatory's Name: Isabella Carmelita Ocampo
Signatory's Position: Owner

Signatory's Phone Number: 6783736363

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88358769
Internet Transmission Date: Wed Jun 12 13:18:29 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201906121318298
44377-88358769-6209f33c1712bc72259bc9ef1
b0739e03bf6a2db2e9f98a8bae59f2be5e935945
9-N/A-N/A-20190612130607641333