Response to Office Action

ENCHANTED

Islestarr Holdings Limited

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88394001
LAW OFFICE ASSIGNED LAW OFFICE 101
MARK SECTION
MARK http://uspto.report/TM/88394001/mark.png
LITERAL ELEMENT ENCHANTED
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (003)(current)
INTERNATIONAL CLASS 003
DESCRIPTION
Cosmetics, make up; skin care preparations, powder compacts; lipsticks; lip gloss; make-up powder and foundation; moisturisers; beauty care preparations, body care preparations, essential oils for personal use; preparations and products for removing make-up; lotions, creams and conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; abrasives; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; alum stones; amber; antiperspirant soap; antiperspirants; aromatics; astringents for cosmetic purposes; balms other than for medical purposes; bath salts, not for medical purposes; baths (cosmetic preparations for -); beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; cedarwood (essential oils of -); citron (essential oils of -); cleansing milk for toilet purposes; colorants for toilet purposes; color-removing preparations; colour-brightening chemicals for household purposes; cosmetic kits; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic -); creams (skin whitening -); dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; dyes (cosmetic -); eau de cologne; emery; essences (ethereal -); essential oils; ethereal essences; ethereal oils; extracts of flowers; eyebrow cosmetics; eyebrow pencils; eyelashes (adhesives for affixing false -); eyelashes (cosmetic preparations for -); eyelashes (false -); false eyelashes; false hair (adhesives for affixing -); false nails; flower perfumes (bases for -); flowers (extracts of -); foot perspiration (soap for -); gels (dental bleaching -); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone; jasmine oil; javelle water; jelly (petroleum -) for cosmetic purposes; joss sticks; kits (cosmetic -); lavender oil; lavender water; lemon (essential oils of -); lotions for cosmetic purposes; lotions (tissues impregnated with cosmetic -); make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes;milk (cleansing -) for toilet purposes; mint essence; mint for perfumery; musk; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; nails (false -); neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; pencils (cosmetic -); pencils (eyebrow -); perfumery; perfumes; permanent waving (neutralizers for -); petroleum jelly for cosmetic purposes; polishes (denture -); pomades for cosmetic purposes; powder (make-up -); pumice stone; rose oil; shampoos; shaving preparations; shaving soap; skin care (cosmetic preparations for -); skin whitening creams; slimming purposes (cosmetic preparations for -); soap; soap (antiperspirant -); soap (cakes of -); soap (deodorant -); soap for foot perspiration; sprays (breath freshening -); strips (breath freshening -); sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes; tissues impregnated with cosmetic lotions; toilet water; toiletries; transfers (decorative -) for cosmetic purposes; varnish (nail -); varnish-removing preparations; waving preparations for the hair; wax (depilatory -); haircare preparations
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER UK3356941
       FOREIGN APPLICATION COUNTRY United Kingdom
        FOREIGN FILING DATE 11/28/2018
GOODS AND/OR SERVICES SECTION (003)(proposed)
INTERNATIONAL CLASS 003
TRACKED TEXT DESCRIPTION
Cosmetics, make up; skin care preparations, powder compacts; cosmetic skin care preparations, solid powder for compacts; lipsticks; lip gloss; make-up powder and foundation; moisturisers; skin moisturisers; beauty care preparations, body care preparations, essential oils for personal use; beauty care cosmetics; preparations and products for removing make-up; cosmetic preparations for body care; lotions, creams and conditioners for the face, hands and body; essential oils for personal use; make-up removing preparations; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasives; abrasive cloth; abrasive paper; skin and nail abrasive preparations; adhesives for affixing false hair; adhesives for cosmetic purposes; almond oil; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; alum stones; almond soap; amber; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; aromatics; antiperspirant soap; antiperspirants; balms other than for medical purposes; aromatic oils; astringents for cosmetic purposes; baths (cosmetic preparations for -); Non-medicated balms for use on hair, skin, lips; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; cedarwood (essential oils of -); breath freshening strips; citron (essential oils of -); cakes of toilet soap; essential oils of cedarwood; colorants for toilet purposes; essential oils of citron; color-removing preparations; cleansing milk for toilet purposes; hair colorants for toilet purposes; cosmetic kits; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprised of make-up; cosmetic preparations for slimming purposes; cosmetics for animals; creams (cosmetic -); cotton sticks for cosmetic purposes; creams (skin whitening -); cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; dyes (cosmetic -); douching preparations for personal sanitary or deodorant purposes; dry shampoos; emery; cosmetic dyes for hair and beards; essences (ethereal -); eau de cologne; emery cloth and paper; ethereal essences; essential oils; extracts of flowers; ethereal oils; extracts of flowers being perfume; eyebrow cosmetics; eyelashes (adhesives for affixing false -); eyebrow pencils; eyelashes (cosmetic preparations for -); adhesives for affixing false eyelashes; eyelashes (false -); cosmetic preparations for eyelashes; false eyelashes; false hair (adhesives for affixing -); adhesives for affixing false hair; false nails; flower perfumes (bases for -); extracts of flowers being perfumes; flowers (extracts of -); soap for foot perspiration; foot perspiration (soap for -); dental bleaching gels; gels (dental bleaching -); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; ionone; jasmine oil for personal use; jasmine oil; javelle toilet water; javelle water; petroleum jelly for cosmetic purposes; jelly (petroleum -) for cosmetic purposes; joss sticks; lavender oil; kits (cosmetic -); lavender water; essential oils of lemon; lotions for cosmetic purposes; lemon (essential oils of -); tissues impregnated with cosmetic lotions; make-up preparations; lotions (tissues impregnated with cosmetic -); make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; milk (cleansing -) for toilet purposes; mint for perfumery; mint essence; musk being perfumery; moustache wax; musk; nail art stickers; nail care preparations; nail polish; nail varnish; false nails; neutralizers for permanent hair waving; nails (false -); oils for cosmetic purposes; neutralizers for permanent waving; oils for perfumes and scents; oils for toilet cosmetic purposes; cosmetic pencils; oils for toilet purposes; perfumery; pencils (cosmetic -); perfumes; pencils (eyebrow -); denture polishes; pomades for cosmetic purposes; make-up powder; permanent waving (neutralizers for -); pumice stone for personal use; rose oil for cosmetic purposes; polishes (denture -); shampoos; shaving preparations; powder (make-up -); shaving soap; pumice stone; cosmetic preparations for skin care; rose oil; skin whitening creams; skin soap; sunscreen preparations; sun-tanning preparations; skin care (cosmetic preparations for -); talcum powder, for toilet use; terpenes being essential oils; slimming purposes (cosmetic preparations for -); toilet water; soap; non-medicated toiletry preparations; soap (antiperspirant -); decorative transfers for cosmetic purposes; soap (cakes of -); varnish-removing preparations; soap (deodorant -); waving preparations for the hair; depilatory wax; sprays (breath freshening -); haircare preparations; strips (breath freshening -); terpenes; toiletries; transfers (decorative -) for cosmetic purposes; varnish (nail -); wax (depilatory -)
FINAL DESCRIPTION
Cosmetics, make up; cosmetic skin care preparations, solid powder for compacts; lipsticks; lip gloss; make-up powder and foundation; skin moisturisers; beauty care cosmetics; cosmetic preparations for body care; essential oils for personal use; make-up removing preparations; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; skin and nail abrasive preparations; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; almond soap; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; antiperspirant soap; antiperspirants; aromatic oils; astringents for cosmetic purposes; Non-medicated balms for use on hair, skin, lips; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; essential oils of cedarwood; essential oils of citron; cleansing milk for toilet purposes; hair colorants for toilet purposes; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprised of make-up; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; cosmetic dyes for hair and beards; eau de cologne; emery cloth and paper; ethereal essences; essential oils; ethereal oils; extracts of flowers being perfume; eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; adhesives for affixing false hair; false nails; extracts of flowers being perfumes; soap for foot perspiration; dental bleaching gels; greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; jasmine oil for personal use; javelle toilet water; petroleum jelly for cosmetic purposes; joss sticks; lavender oil; lavender water; essential oils of lemon; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; mint for perfumery; musk being perfumery; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; false nails; neutralizers for permanent hair waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet cosmetic purposes; cosmetic pencils; perfumery; perfumes; denture polishes; pomades for cosmetic purposes; make-up powder; pumice stone for personal use; rose oil for cosmetic purposes; shampoos; shaving preparations; shaving soap; cosmetic preparations for skin care; skin whitening creams; skin soap; sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes being essential oils; toilet water; non-medicated toiletry preparations; decorative transfers for cosmetic purposes; varnish-removing preparations; waving preparations for the hair; depilatory wax; haircare preparations
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER UK3356941
       FOREIGN APPLICATION COUNTRY United Kingdom
       FOREIGN FILING DATE 11/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER UK3356941
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
02/22/2019
       FOREIGN EXPIRATION DATE 11/28/2028
       DATE FOREIGN REGISTRATION
       RENEWED
        (if applicable)
11/28/2028
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-38110143162-132634561_._UK_reg_cert__002_.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT17\IMAGEOUT17\883\940\88394001\xml4\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394001\xml4\ROA0003.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (044)(current)
INTERNATIONAL CLASS 044
DESCRIPTION
Make up artist services; make-up services; cosmetic make-up services; beauty care services; beauty salon and beauty treatment services; beauty therapy services and treatments; beauty treatment; healthcare, diet, exercise and lifestyle advisory services; cosmetic treatment for the hair; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER UK3356941
       FOREIGN APPLICATION COUNTRY United Kingdom
        FOREIGN FILING DATE 11/28/2018
GOODS AND/OR SERVICES SECTION (044)(proposed)
INTERNATIONAL CLASS 044
TRACKED TEXT DESCRIPTION
Make up artist services; make-up services; make-up application services; cosmetic make-up services; cosmetic make-up application services; beauty care services; beauty salon and beauty treatment services; beauty salon and beauty care services; beauty therapy services and treatments; beauty therapy services and treatments being beauty care services; beauty treatment; beauty treatment being beauty care services; healthcare, diet, exercise and lifestyle advisory services; healthcare, weight reduction diet planning, weight loss program services and lifestyle wellness advisory services; cosmetic treatment for the hair; cosmetic treatment for the hair being hair styling; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services
FINAL DESCRIPTION
Make up artist services; make-up application services; cosmetic make-up application services; beauty care services; beauty salon and beauty care services; beauty therapy services and treatments being beauty care services; beauty treatment being beauty care services; healthcare, weight reduction diet planning, weight loss program services and lifestyle wellness advisory services; cosmetic treatment for the hair being hair styling; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER UK3356941
       FOREIGN APPLICATION COUNTRY United Kingdom
       FOREIGN FILING DATE 11/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER UK3356941
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
02/22/2019
       FOREIGN EXPIRATION DATE 11/28/2028
       DATE FOREIGN REGISTRATION
       RENEWED
        (if applicable)
11/28/2028
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU1-38110143162-132634561_._UK_reg_cert__002_.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT17\IMAGEOUT17\883\940\88394001\xml4\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394001\xml4\ROA0005.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
ADDITIONAL STATEMENTS SECTION
MISCELLANEOUS STATEMENT "Applicant respectfully requests that examination on this application be suspending pending the outcome of Application Serial Nos. 87949294, 88195452, 88103327, 88199161, 88162828 and 87920325."
ATTORNEY SECTION (current)
NAME Sally M. Abel
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME FENWICK & WEST LLP
STREET 801 CALIFORNIA STREET, SILICON VALLEY
CITY MOUNTAIN VIEW
STATE California
POSTAL CODE 94041
COUNTRY US
PHONE 650-988-5500
EMAIL trademarks@fenwick.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 29603-70187
ATTORNEY SECTION (proposed)
NAME Sally M. Abel
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME FENWICK & WEST LLP
STREET 801 CALIFORNIA STREET, SILICON VALLEY
CITY MOUNTAIN VIEW
STATE California
POSTAL CODE 94041
COUNTRY United States
PHONE 650-988-5500
EMAIL trademarks@fenwick.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 29603-70187
OTHER APPOINTED ATTORNEY all other attorneys
CORRESPONDENCE SECTION (current)
NAME SALLY M. ABEL
FIRM NAME FENWICK & WEST LLP
STREET 801 CALIFORNIA STREET, SILICON VALLEY
CITY MOUNTAIN VIEW
STATE California
POSTAL CODE 94041
COUNTRY US
PHONE 650-988-5500
EMAIL trademarks@fenwick.com; jmartingano@fenwick.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 29603-70187
CORRESPONDENCE SECTION (proposed)
NAME Sally M. Abel
FIRM NAME FENWICK & WEST LLP
STREET 801 CALIFORNIA STREET, SILICON VALLEY
CITY MOUNTAIN VIEW
STATE California
POSTAL CODE 94041
COUNTRY United States
PHONE 650-988-5500
EMAIL trademarks@fenwick.com; jmartingano@fenwick.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 29603-70187
SIGNATURE SECTION
DECLARATION SIGNATURE The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
RESPONSE SIGNATURE /sabel/
SIGNATORY'S NAME Sally M. Abel
SIGNATORY'S POSITION Attorney of record, California bar member
DATE SIGNED 12/23/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Dec 24 11:06:02 EST 2019
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20191224110602471427-8839
4001-70039ef1e46ff8c08b3a
edab55fb62bd34991dcaf31ba
b27a0fd9dab6191914-N/A-N/
A-20191223164124766164



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. 88394001 ENCHANTED(Standard Characters, see http://uspto.report/TM/88394001/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 003 for Cosmetics, make up; skin care preparations, powder compacts; lipsticks; lip gloss; make-up powder and foundation; moisturisers; beauty care preparations, body care preparations, essential oils for personal use; preparations and products for removing make-up; lotions, creams and conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; abrasives; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; alum stones; amber; antiperspirant soap; antiperspirants; aromatics; astringents for cosmetic purposes; balms other than for medical purposes; bath salts, not for medical purposes; baths (cosmetic preparations for -); beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; cedarwood (essential oils of -); citron (essential oils of -); cleansing milk for toilet purposes; colorants for toilet purposes; color-removing preparations; colour-brightening chemicals for household purposes; cosmetic kits; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic -); creams (skin whitening -); dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; dyes (cosmetic -); eau de cologne; emery; essences (ethereal -); essential oils; ethereal essences; ethereal oils; extracts of flowers; eyebrow cosmetics; eyebrow pencils; eyelashes (adhesives for affixing false -); eyelashes (cosmetic preparations for -); eyelashes (false -); false eyelashes; false hair (adhesives for affixing -); false nails; flower perfumes (bases for -); flowers (extracts of -); foot perspiration (soap for -); gels (dental bleaching -); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone; jasmine oil; javelle water; jelly (petroleum -) for cosmetic purposes; joss sticks; kits (cosmetic -); lavender oil; lavender water; lemon (essential oils of -); lotions for cosmetic purposes; lotions (tissues impregnated with cosmetic -); make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes;milk (cleansing -) for toilet purposes; mint essence; mint for perfumery; musk; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; nails (false -); neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; pencils (cosmetic -); pencils (eyebrow -); perfumery; perfumes; permanent waving (neutralizers for -); petroleum jelly for cosmetic purposes; polishes (denture -); pomades for cosmetic purposes; powder (make-up -); pumice stone; rose oil; shampoos; shaving preparations; shaving soap; skin care (cosmetic preparations for -); skin whitening creams; slimming purposes (cosmetic preparations for -); soap; soap (antiperspirant -); soap (cakes of -); soap (deodorant -); soap for foot perspiration; sprays (breath freshening -); strips (breath freshening -); sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes; tissues impregnated with cosmetic lotions; toilet water; toiletries; transfers (decorative -) for cosmetic purposes; varnish (nail -); varnish-removing preparations; waving preparations for the hair; wax (depilatory -); haircare preparations
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.

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[ United Kingdom application number UK3356941 filed 11/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cosmetics, make up; skin care preparations, powder compacts; cosmetic skin care preparations, solid powder for compacts; lipsticks; lip gloss; make-up powder and foundation; moisturisers; skin moisturisers; beauty care preparations, body care preparations, essential oils for personal use; beauty care cosmetics; preparations and products for removing make-up; cosmetic preparations for body care; lotions, creams and conditioners for the face, hands and body; essential oils for personal use; make-up removing preparations; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasives; abrasive cloth; abrasive paper; skin and nail abrasive preparations; adhesives for affixing false hair; adhesives for cosmetic purposes; almond oil; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; alum stones; almond soap; amber; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; aromatics; antiperspirant soap; antiperspirants; balms other than for medical purposes; aromatic oils; astringents for cosmetic purposes; baths (cosmetic preparations for -); Non-medicated balms for use on hair, skin, lips; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; cedarwood (essential oils of -); breath freshening strips; citron (essential oils of -); cakes of toilet soap; essential oils of cedarwood; colorants for toilet purposes; essential oils of citron; color-removing preparations; cleansing milk for toilet purposes; hair colorants for toilet purposes; cosmetic kits; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprised of make-up; cosmetic preparations for slimming purposes; cosmetics for animals; creams (cosmetic -); cotton sticks for cosmetic purposes; creams (skin whitening -); cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; dyes (cosmetic -); douching preparations for personal sanitary or deodorant purposes; dry shampoos; emery; cosmetic dyes for hair and beards; essences (ethereal -); eau de cologne; emery cloth and paper; ethereal essences; essential oils; extracts of flowers; ethereal oils; extracts of flowers being perfume; eyebrow cosmetics; eyelashes (adhesives for affixing false -); eyebrow pencils; eyelashes (cosmetic preparations for -); adhesives for affixing false eyelashes; eyelashes (false -); cosmetic preparations for eyelashes; false eyelashes; false hair (adhesives for affixing -); adhesives for affixing false hair; false nails; flower perfumes (bases for -); extracts of flowers being perfumes; flowers (extracts of -); soap for foot perspiration; foot perspiration (soap for -); dental bleaching gels; gels (dental bleaching -); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; ionone; jasmine oil for personal use; jasmine oil; javelle toilet water; javelle water; petroleum jelly for cosmetic purposes; jelly (petroleum -) for cosmetic purposes; joss sticks; lavender oil; kits (cosmetic -); lavender water; essential oils of lemon; lotions for cosmetic purposes; lemon (essential oils of -); tissues impregnated with cosmetic lotions; make-up preparations; lotions (tissues impregnated with cosmetic -); make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; milk (cleansing -) for toilet purposes; mint for perfumery; mint essence; musk being perfumery; moustache wax; musk; nail art stickers; nail care preparations; nail polish; nail varnish; false nails; neutralizers for permanent hair waving; nails (false -); oils for cosmetic purposes; neutralizers for permanent waving; oils for perfumes and scents; oils for toilet cosmetic purposes; cosmetic pencils; oils for toilet purposes; perfumery; pencils (cosmetic -); perfumes; pencils (eyebrow -); denture polishes; pomades for cosmetic purposes; make-up powder; permanent waving (neutralizers for -); pumice stone for personal use; rose oil for cosmetic purposes; polishes (denture -); shampoos; shaving preparations; powder (make-up -); shaving soap; pumice stone; cosmetic preparations for skin care; rose oil; skin whitening creams; skin soap; sunscreen preparations; sun-tanning preparations; skin care (cosmetic preparations for -); talcum powder, for toilet use; terpenes being essential oils; slimming purposes (cosmetic preparations for -); toilet water; soap; non-medicated toiletry preparations; soap (antiperspirant -); decorative transfers for cosmetic purposes; soap (cakes of -); varnish-removing preparations; soap (deodorant -); waving preparations for the hair; depilatory wax; sprays (breath freshening -); haircare preparations; strips (breath freshening -); terpenes; toiletries; transfers (decorative -) for cosmetic purposes; varnish (nail -); wax (depilatory -)Class 003 for Cosmetics, make up; cosmetic skin care preparations, solid powder for compacts; lipsticks; lip gloss; make-up powder and foundation; skin moisturisers; beauty care cosmetics; cosmetic preparations for body care; essential oils for personal use; make-up removing preparations; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; skin and nail abrasive preparations; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; almond soap; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; antiperspirant soap; antiperspirants; aromatic oils; astringents for cosmetic purposes; Non-medicated balms for use on hair, skin, lips; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; essential oils of cedarwood; essential oils of citron; cleansing milk for toilet purposes; hair colorants for toilet purposes; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprised of make-up; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; cosmetic dyes for hair and beards; eau de cologne; emery cloth and paper; ethereal essences; essential oils; ethereal oils; extracts of flowers being perfume; eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; adhesives for affixing false hair; false nails; extracts of flowers being perfumes; soap for foot perspiration; dental bleaching gels; greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; jasmine oil for personal use; javelle toilet water; petroleum jelly for cosmetic purposes; joss sticks; lavender oil; lavender water; essential oils of lemon; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; mint for perfumery; musk being perfumery; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; false nails; neutralizers for permanent hair waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet cosmetic purposes; cosmetic pencils; perfumery; perfumes; denture polishes; pomades for cosmetic purposes; make-up powder; pumice stone for personal use; rose oil for cosmetic purposes; shampoos; shaving preparations; shaving soap; cosmetic preparations for skin care; skin whitening creams; skin soap; sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes being essential oils; toilet water; non-medicated toiletry preparations; decorative transfers for cosmetic purposes; varnish-removing preparations; waving preparations for the hair; depilatory wax; haircare preparations
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number UK3356941 filed 11/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK3356941 registered 02/22/2019 with a renewal date of 11/28/2028 and an expiration date of 11/28/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-38110143162-132634561_._UK_reg_cert__002_.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Make up artist services; make-up services; cosmetic make-up services; beauty care services; beauty salon and beauty treatment services; beauty therapy services and treatments; beauty treatment; healthcare, diet, exercise and lifestyle advisory services; cosmetic treatment for the hair; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services
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.

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[ United Kingdom application number UK3356941 filed 11/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Make up artist services; make-up services; make-up application services; cosmetic make-up services; cosmetic make-up application services; beauty care services; beauty salon and beauty treatment services; beauty salon and beauty care services; beauty therapy services and treatments; beauty therapy services and treatments being beauty care services; beauty treatment; beauty treatment being beauty care services; healthcare, diet, exercise and lifestyle advisory services; healthcare, weight reduction diet planning, weight loss program services and lifestyle wellness advisory services; cosmetic treatment for the hair; cosmetic treatment for the hair being hair styling; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above servicesClass 044 for Make up artist services; make-up application services; cosmetic make-up application services; beauty care services; beauty salon and beauty care services; beauty therapy services and treatments being beauty care services; beauty treatment being beauty care services; healthcare, weight reduction diet planning, weight loss program services and lifestyle wellness advisory services; cosmetic treatment for the hair being hair styling; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number UK3356941 filed 11/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK3356941 registered 02/22/2019 with a renewal date of 11/28/2028 and an expiration date of 11/28/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-38110143162-132634561_._UK_reg_cert__002_.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Sally M. Abel. Sally M. Abel of FENWICK & WEST LLP, is located at

      801 CALIFORNIA STREET, SILICON VALLEY
      MOUNTAIN VIEW, California 94041
      US
The docket/reference number is 29603-70187.

The phone number is 650-988-5500.

The email address is trademarks@fenwick.com

The applicants proposed attorney information: Sally M. Abel. Other appointed attorneys are all other attorneys. Sally M. Abel of FENWICK & WEST 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

      801 CALIFORNIA STREET, SILICON VALLEY
      MOUNTAIN VIEW, California 94041
      United States
The docket/reference number is 29603-70187.

The phone number is 650-988-5500.

The email address is trademarks@fenwick.com

Sally M. Abel 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: SALLY M. ABEL. SALLY M. ABEL of FENWICK & WEST LLP, is located at

      801 CALIFORNIA STREET, SILICON VALLEY
      MOUNTAIN VIEW, California 94041
      US
The docket/reference number is 29603-70187.

The phone number is 650-988-5500.

The email address is trademarks@fenwick.com; jmartingano@fenwick.com

The applicants proposed correspondence information: Sally M. Abel. Sally M. Abel of FENWICK & WEST LLP, is located at

      801 CALIFORNIA STREET, SILICON VALLEY
      MOUNTAIN VIEW, California 94041
      United States
The docket/reference number is 29603-70187.

The phone number is 650-988-5500.

The email address is trademarks@fenwick.com; jmartingano@fenwick.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
"Applicant respectfully requests that examination on this application be suspending pending the outcome of Application Serial Nos. 87949294, 88195452, 88103327, 88199161, 88162828 and 87920325."


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /sabel/     Date: 12/23/2019
Signatory's Name: Sally M. Abel
Signatory's Position: Attorney of record, California 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:    SALLY M. ABEL
   FENWICK & WEST LLP
   
   801 CALIFORNIA STREET, SILICON VALLEY
   MOUNTAIN VIEW, California 94041
Mailing Address:    Sally M. Abel
   FENWICK & WEST LLP
   801 CALIFORNIA STREET, SILICON VALLEY
   MOUNTAIN VIEW, California 94041
        
Serial Number: 88394001
Internet Transmission Date: Tue Dec 24 11:06:02 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912241106024
71427-88394001-70039ef1e46ff8c08b3aedab5
5fb62bd34991dcaf31bab27a0fd9dab6191914-N
/A-N/A-20191223164124766164


Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]


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