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. 88403712 FEATHERLOFT(Standard Characters, see http://uspto.report/TM/88403712/mark.png) has been amended as follows:

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

Applicant respectfully requests reconsideration of the likelihood of confusion rejection. Applicant notes that the applied for mark FEATHERLOFT has cited against it a registration for the mark FEATHERSOFT. Applicant respectfully submits that there is no likelihood of confusion given the widespread use of the respective terms and industry meaning of ?LOFT? and ?SOFT?. For instance, in review of the TESS database of LOFT containing trademarks for pillows indicate there are 99 live uses of registrations and/or pending applications. Similarly, there are 105 live occurrences of the term SOFT when used with identical goods of pillows. It is respectfully submitted that within the relevant industry, consumers are accustomed to seeing these commonly used terms and can distinguish between them. Applicant notes that the Examiner has submitted an argument that there is only a one letter difference between the two terms. Applicant respectfully submits that the term ?LOFT? has a very specific meaning in the industry with respect to a type of density or thickness measurement. This meaning, combined with a widespread occurrence of the use of the term for identical products, suggest that consumers are capable of distinguishing the term since LOFT and SOFT have different connotations. Additionally, Applicant submits as evidence Registration No. 4,638,166 for the mark COOL LOFT for pillows and Registration No. 5,197,224 for COOLSOFT for sheets. These marks are directed to very similar goods and have a dominant identical terms of COOL. The terms differ by only the same letter difference that the Examiner has asserted against Applicant?s cited mark based upon the cited registration. The current database reflects that these two registrations are evidence that consumers can distinguish between a term SOFT and the term LOFT even when used in conjunction with an identical dominant term such as COOL. Accordingly, Applicant respectfully submits that there is no likelihood of confusion of FEATHERLOFT and FEATHER SOFT given the widespread occurrence of the terms and the fact that very similar terms for similar goods differing by only one letter co-exist on the federal database.

EVIDENCE
Evidence in the nature of US Registration No. 5,197,224 and US Registration No. 4,638,166 has been attached.
Original PDF file:
evi_71921146-20191203163246529424_._dhl5tmremarks.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for bed pillows, quilted blankets, comforters, decorative pillows and featherbeds
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: bed pillows, quilted blankets, comforters, decorative pillows and featherbeds; quilted bed blankets; comfortersClass 024 for quilted bed blankets; comforters
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 hereby adds the following class of goods/services to the application:
New: Class 020 for bed pillows; decorative pillows; feather beds
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: J. Bennett Mullinax. J. Bennett Mullinax of J. BENNETT MULLINAX, LLC, is located at

      PO BOX 26029
      GREENVILLE, South Carolina 29616-1029
      US
The docket/reference number is DHL-5-TM.

The phone number is 864-987-9696.

The fax number is 8649879686.

The email address is docketing@mullinaxpatent.com

The applicants proposed attorney information: J. Bennett Mullinax. J. Bennett Mullinax of J. BENNETT MULLINAX, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 26029
      GREENVILLE, South Carolina 29616-1029
      United States
The docket/reference number is DHL-5-TM.

The phone number is 864-987-9696.

The fax number is 8649879686.

The email address is docketing@mullinaxpatent.com

J. Bennett Mullinax 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: J. BENNETT MULLINAX. J. BENNETT MULLINAX of J. BENNETT MULLINAX, LLC, is located at

      PO BOX 26029
      GREENVILLE, South Carolina 29616-1029
      US
The docket/reference number is DHL-5-TM.

The phone number is 864-987-9696.

The fax number is 8649879686.

The email address is docketing@mullinaxpatent.com

The applicants proposed correspondence information: J. Bennett Mullinax. J. Bennett Mullinax of J. BENNETT MULLINAX, LLC, is located at

      PO BOX 26029
      GREENVILLE, South Carolina 29616-1029
      United States
The docket/reference number is DHL-5-TM.

The phone number is 864-987-9696.

The fax number is 8649879686.

The email address is docketing@mullinaxpatent.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /J. Bennett Mullinax/      Date: 12/03/2019
Signatory's Name: J. Bennett Mullinax
Signatory's Position: Attorney of Record, SC Bar 7771
Signatory's Phone Number: 8649879696


Response Signature
Signature: /J. Bennett Mullinax/     Date: 12/03/2019
Signatory's Name: J. Bennett Mullinax
Signatory's Position: Attorney of Record, SC Bar 7771

Signatory's Phone Number: 8649879696

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:    J. BENNETT MULLINAX
   J. BENNETT MULLINAX, LLC
   
   PO BOX 26029
   GREENVILLE, South Carolina 29616-1029
Mailing Address:    J. Bennett Mullinax
   J. BENNETT MULLINAX, LLC
   PO BOX 26029
   GREENVILLE, South Carolina 29616-1029
        
RAM Sale Number: 88403712
RAM Accounting Date: 12/03/2019
        
Serial Number: 88403712
Internet Transmission Date: Tue Dec 03 16:46:13 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201912031646137245
12-88403712-7006dd250da432f50ca3f7d4c3e3
7672e413e7b56eff7e428acdd9ec851a4c2bb-ET
-46127561-20191203163246529424