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. 88373537 WHAT2WEAR(Standard Characters, see http://uspto.report/TM/88373537/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of a pdf titled WHAT2WEAR Office Action Response has been attached.
Original PDF file:
evi_19294203253-20191030153008083893_._WHAT2WEAR_Office_Action_Response.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer application software for desktop and portable computers, mobile phones and media players, namely, software for closet and wardrobe management using real-time inventory
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: Computer application software for desktop and portable computers, mobile phones and media players, namely, software for closet and wardrobe management using real-time inventory; Downloadable computer application software for desktop and portable computers, mobile phones and media players, namely, software for closet and wardrobe management using real-time inventory; downloadable computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desiredClass 009 for Downloadable computer application software for desktop and portable computers, mobile phones and media players, namely, software for closet and wardrobe management using real-time inventory; downloadable computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired
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 035 for Advertising and marketing services; promoting the goods and services of others by providing online advertising and links to websites of others; advertising and marketing services, namely, promoting the goods and services of others; computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired
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: Advertising and marketing services; promoting the goods and services of others by providing online advertising and links to websites of others; advertising and marketing services, namely, promoting the goods and services of others; computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desiredClass 035 for Advertising and marketing services; promoting the goods and services of others by providing online advertising and links to websites of others; advertising and marketing services, namely, promoting the goods and services of others
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 042 for Providing web sites featuring information in the fields of or related to fashion; computer services, namely, creating an online community for users to participate in and initiate discussions and engage in social networking about fashion; creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking
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: Providing web sites featuring information in the fields of or related to fashion; computer services, namely, creating an online community for users to participate in and initiate discussions and engage in social networking about fashion; creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; providing temporary use of non-downloadable software, for desktop and portable computers and media players, for closet and wardrobe management using real-time inventory and for providing personal stylist services, namely, for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desiredClass 042 for computer services, namely, creating an online community for users to participate in and initiate discussions and engage in social networking about fashion; creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; providing temporary use of non-downloadable software, for desktop and portable computers and media players, for closet and wardrobe management using real-time inventory and for providing personal stylist services, namely, for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired
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 045 for Providing online fashion questions to help users determine the style of clothing best suited to their individual needs and preferences; Fashion information; fashion coordination services for individuals; computerized clothing scanning for the purpose of clothing selection for fashion purposes; computerized shoe scanning and fitting of shoes for the purpose of shoe selection for fashion purposes; providing news and information in the field of fashion; fashion consulting services; fashion trend consulting services; personal fashion consulting services; color analysis for wardrobe and fashion selection; provision of a web site featuring information on fashion; Providing fashion consulting in the nature of personalized fashion suggestions on apparel, footwear, bags, leather goods, jewelry, watches, toiletries, fragrances and eyewear via a website; providing an online searchable computer database in the field of personal fashion consulting services with respect to fashion products and merchandise, namely, aiding a consumer in choosing fashion products likely to appeal to them; Online social networking services in the field of fashion, lifestyle, motivation, inspiration and self-improvement obtained through social media posting, and providing one or more links to third party retailers to provide additional options; Fashion consulting services; providing information concerning fashion; personal stylist services, namely, evaluating the fashion styles of others and recommending clothing and accessories; online social networking services provided through a fashion community website; Providing fashion consulting based on season; size, health of clothing and condition of the clothing; Providing fashion consulting for donation or consignment opportunities; Providing fashion consulting based on seasons and storage
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: Providing online fashion questions to help users determine the style of clothing best suited to their individual needs and preferences; Fashion information; fashion coordination services for individuals; computerized clothing scanning for the purpose of clothing selection for fashion purposes; computerized shoe scanning and fitting of shoes for the purpose of shoe selection for fashion purposes; providing news and information in the field of fashion; fashion consulting services; fashion trend consulting services; personal fashion consulting services; color analysis for wardrobe and fashion selection; provision of a web site featuring information on fashion; Providing fashion consulting in the nature of personalized fashion suggestions on apparel, footwear, bags, leather goods, jewelry, watches, toiletries, fragrances and eyewear via a website; providing an online searchable computer database in the field of personal fashion consulting services with respect to fashion products and merchandise, namely, aiding a consumer in choosing fashion products likely to appeal to them; Online social networking services in the field of fashion, lifestyle, motivation, inspiration and self-improvement obtained through social media posting, and providing one or more links to third party retailers to provide additional options; Fashion consulting services; providing information concerning fashion; personal stylist services, namely, evaluating the fashion styles of others and recommending clothing and accessories; online social networking services provided through a fashion community website; Providing fashion consulting based on season; size, health of clothing and condition of the clothing; Providing fashion consulting for donation or consignment opportunities; Providing fashion consulting based on seasons and storage; providing web sites featuring information in the fields of or related to fashionClass 045 for Providing online fashion questions to help users determine the style of clothing best suited to their individual needs and preferences; Fashion information; fashion coordination services for individuals; computerized clothing scanning for the purpose of clothing selection for fashion purposes; computerized shoe scanning and fitting of shoes for the purpose of shoe selection for fashion purposes; providing news and information in the field of fashion; fashion consulting services; fashion trend consulting services; personal fashion consulting services; color analysis for wardrobe and fashion selection; provision of a web site featuring information on fashion; Providing fashion consulting in the nature of personalized fashion suggestions on apparel, footwear, bags, leather goods, jewelry, watches, toiletries, fragrances and eyewear via a website; providing an online searchable computer database in the field of personal fashion consulting services with respect to fashion products and merchandise, namely, aiding a consumer in choosing fashion products likely to appeal to them; Online social networking services in the field of fashion, lifestyle, motivation, inspiration and self-improvement obtained through social media posting, and providing one or more links to third party retailers to provide additional options; Fashion consulting services; providing information concerning fashion; personal stylist services, namely, evaluating the fashion styles of others and recommending clothing and accessories; online social networking services provided through a fashion community website; Providing fashion consulting based on season; size, health of clothing and condition of the clothing; Providing fashion consulting for donation or consignment opportunities; Providing fashion consulting based on seasons and storage; providing web sites featuring information in the fields of or related to fashion
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: Ray Ashburg. Ray Ashburg of ELECTROLUX LEGAL DEPARTMENT, is located at

      TKO 416
      10200 DAVID TAYLOR DRIVE
      CHARLOTTE, North Carolina 28262
      US
The docket/reference number is ID-211/60730.

The phone number is 704-458-1466.

The fax number is 704-547-7053.

The email address is ray.ashburg@electrolux.com

The applicants proposed attorney information: Ray Ashburg. Ray Ashburg of ELECTROLUX LEGAL DEPARTMENT, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      TKO 416
      10200 DAVID TAYLOR DRIVE
      CHARLOTTE, North Carolina 28262
      United States
The docket/reference number is ID-211/60730.

The phone number is 704-458-1466.

The fax number is 704-547-7053.

The email address is ray.ashburg@electrolux.com

Ray Ashburg 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: RAY ASHBURG. RAY ASHBURG of ELECTROLUX LEGAL DEPARTMENT, is located at

      TKO 416
      10200 DAVID TAYLOR DRIVE
      CHARLOTTE, North Carolina 28262
      US
The docket/reference number is ID-211/60730.

The phone number is 704-458-1466.

The fax number is 704-547-7053.

The email address is ray.ashburg@electrolux.com; nadia.candeo@electrolux.com; na.trademark.reporting@electrolux.com

The applicants proposed correspondence information: Ray Ashburg. Ray Ashburg of ELECTROLUX LEGAL DEPARTMENT, is located at

      TKO 416
      10200 DAVID TAYLOR DRIVE
      CHARLOTTE, North Carolina 28262
      United States
The docket/reference number is ID-211/60730.

The phone number is 704-458-1466.

The fax number is 704-547-7053.

The email address is ray.ashburg@electrolux.com

SIGNATURE(S)
Response Signature
Signature: /Ray Ashburg/     Date: 10/30/2019
Signatory's Name: Ray Ashburg
Signatory's Position: Attorney of Record

Signatory's Phone Number: 704-458-1466

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:    RAY ASHBURG
   ELECTROLUX LEGAL DEPARTMENT
   TKO 416
   10200 DAVID TAYLOR DRIVE
   CHARLOTTE, North Carolina 28262
Mailing Address:    Ray Ashburg
   ELECTROLUX LEGAL DEPARTMENT
   TKO 416
   10200 DAVID TAYLOR DRIVE
   CHARLOTTE, North Carolina 28262
        
Serial Number: 88373537
Internet Transmission Date: Wed Oct 30 16:51:26 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201910301651265
46472-88373537-700381491a4776860b0974b4b
66a36224290b1703649c441d1be8461653d657e7
-N/A-N/A-20191030153008083893