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. 88396150 COLORWAYS(Standard Characters, see http://uspto.report/TM/88396150/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 with the evidence.

EVIDENCE
Evidence in the nature of printouts from the TESS database has been attached.
Original PDF file:
evi_21613612218-20191226093612860546_._Argument.pdf
Converted PDF file(s) ( 25 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Accessories, protective cases and decorations for mobile electronic devices; decorative magnets; headphones
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: Accessories, protective cases and decorations for mobile electronic devices; Accessories, protective cases and decorations for mobile electronic devices, namely, protective covers and cases for cell phones, mobile phones, smartphones and tablet computers, cell phone, mobile phone and smartphone cases featuring battery charging devices, power bank battery chargers, mounts, stands and belt clips for cell phones, mobile phones, smartphones and tablet computers, stands for cell phones, mobile phones and smartphones in the shape of a folding metal ring, phone grips with built-in microphones, selfie sticks, camera lenses for cell phones, mobile phones, smartphones and tablet computers, accessory lights for cell phones, mobile phones and smartphones, audio speakers and earbuds; decorative magnets; headphonesClass 009 for Accessories, protective cases and decorations for mobile electronic devices, namely, protective covers and cases for cell phones, mobile phones, smartphones and tablet computers, cell phone, mobile phone and smartphone cases featuring battery charging devices, power bank battery chargers, mounts, stands and belt clips for cell phones, mobile phones, smartphones and tablet computers, stands for cell phones, mobile phones and smartphones in the shape of a folding metal ring, phone grips with built-in microphones, selfie sticks, camera lenses for cell phones, mobile phones, smartphones and tablet computers, accessory lights for cell phones, mobile phones and smartphones, audio speakers and earbuds; decorative magnets; headphones
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 014 for Jewelry; charms; key chains
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: Jewelry; charms; charms, namely, charms for jewelry, necklaces, bracelets, key rings and key chains; key chainsClass 014 for Jewelry; charms, namely, charms for jewelry, necklaces, bracelets, key rings and key chains; key chains
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 016 for Gifts and decorative items and sets; stickers; pens; pencils
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: Gifts and decorative items and sets; Gifts and decorative items and sets, namely, stickers for cell phones, mobile phones, smart phones and tablet computers; stickers; pens; pencilsClass 016 for Gifts and decorative items and sets, namely, stickers for cell phones, mobile phones, smart phones and tablet computers; stickers; pens; pencils
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 026 for Decorative charms, ornaments, pins, button, ribbons and patches
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: Decorative charms, ornaments, pins, button, ribbons and patches; Decorative charms, namely, decorative charms for cell phones, mobile phones, smart phones and tablet computers, charms for attachment for zipper pulls and buttons, charms for shoes and purse charms; ornaments; pins; button, ribbons and patchesClass 026 for Decorative charms, namely, decorative charms for cell phones, mobile phones, smart phones and tablet computers, charms for attachment for zipper pulls and buttons, charms for shoes and purse charms; ornaments; pins; button, ribbons and patches
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: Theodore R. Remaklus. Theodore R. Remaklus of WOOD, HERRON & EVANS, L.L.P., is located at

      2700 CAREW TOWER
      441 VINE STREET
      CINCINNATI, Ohio 45202
      US
The docket/reference number is SCOM-122-122.

The phone number is 513-241-2324.

The fax number is 5132416234.

The email address is tremaklus@whe-law.com

The applicants proposed attorney information: Theodore R. Remaklus. Other appointed attorneys are Kathryn E. Smith, Sarah Otte Graber, Lori Krafte, Glenn D. Bellamy, Sean K. Owens, Michael G. Frey. Theodore R. Remaklus of Wood, Herron & Evans, L.L.P., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2700 Carew Tower
      441 Vine Street
      Cincinnati, Ohio 45202
      United States
The docket/reference number is SCOM-122-122.

The phone number is 513-241-2324.

The fax number is 5132416234.

The email address is tremaklus@whe-law.com

Theodore R. Remaklus 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: THEODORE R. REMAKLUS. THEODORE R. REMAKLUS of WOOD, HERRON & EVANS, L.L.P., is located at

      2700 CAREW TOWER
      441 VINE STREET
      CINCINNATI, Ohio 45202
      US
The docket/reference number is SCOM-122-122.

The phone number is 513-241-2324.

The fax number is 5132416234.

The email address is tremaklus@whe-law.com; usptodock@whe-law.com; bdrambarean@whe-law.com

The applicants proposed correspondence information: Theodore R. Remaklus. Theodore R. Remaklus of Wood, Herron & Evans, L.L.P., is located at

      2700 Carew Tower
      441 Vine Street
      Cincinnati, Ohio 45202
      United States
The docket/reference number is SCOM-122-122.

The phone number is 513-241-2324.

The fax number is 5132416234.

The email address is tremaklus@whe-law.com; usptodock@whe-law.com; bdrambarean@whe-law.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
COLORWAYS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /theodore r remaklus/     Date: 12/26/2019
Signatory's Name: Theodore R. Remaklus
Signatory's Position: Attorney for Applicant, Ohio bar member

Signatory's Phone Number: 5132412324

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:    THEODORE R. REMAKLUS
   WOOD, HERRON & EVANS, L.L.P.
   2700 CAREW TOWER
   441 VINE STREET
   CINCINNATI, Ohio 45202
Mailing Address:    Theodore R. Remaklus
   Wood, Herron & Evans, L.L.P.
   2700 Carew Tower
   441 Vine Street
   Cincinnati, Ohio 45202
        
Serial Number: 88396150
Internet Transmission Date: Thu Dec 26 09:40:26 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201912260940264
31135-88396150-700e2f76180613a5b13ade45e
7d988b7de947ab2dfe53451bf0d69a814522cd44
c8-N/A-N/A-20191226093612860546