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. 88403893 ORG WELL ORGANIZED (Stylized and/or with Design, see http://uspto.report/TM/88403893/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: ORG WELL ORGANIZED (Stylized and/or with Design, see http://uspto.report/TM/88403893/mark.png)
Proposed: ORG WELL ORGANIZED (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the wording "ORG" in capital letters, over a thick horizontal line, over the wording "WELL ORGANIZED" in all capital letters.

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

RESPONSE

This is in response to the Office Action dated June 26, 2019.

 

 

SUBSTITUTE DRAWING

 

As required by the Examining Attorney, please substitute the attached drawing which shows the mark in black on a white background.

 

DISCLAIMER

 

As required by the Examining Attorney, please amend the application by inserting the following disclaimer:

 

No claim is made to the exclusive right to use the term “ORGANIZED” apart from the mark as shown.

 

 

IDENTIFICATION OF GOODS

 

Please amend the identification of goods by deleting the present identification of goods and substituting therefor the following.

 

International Class 6:

Baskets of common metals; metal hooks

 

International Class 20:

Drawer organizers; REMOVABLE mats USED IN CABINETS under sinks; undersink drawer organizers; towel stands; bed post SUPPORTS FOR PLACEMENT UNDER THE LEGS OF BED FRAMES TO RAISE FRAME HEIGHT; plastic bins; NON-METAL chests for storage

 

International Class 21:

Baskets for domestic use, not of metal; stemware holders; dish drying racks; shower caddies; sink organizers, NAMELY, SPONGE HOLDERS; garment storage containers for household use

 

International Class 22:

Garment bags for storage.

 

*                                  *                                  *

CONCLUSION

Having addressed all issues raised in the Official Action, Applicant believes that the application is in condition for allowance.  Accordingly, an immediate speedy publication is respectfully requested.

No fee is deemed necessary for this filing.  However, if the Examining Attorney believes a fee is appropriate, authorization is given to charge Deposit Account No. 12-1095.

If the Examining Attorney has any questions concerning this matter, they are encouraged to contact Applicant’s counsel by telephone.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for DRAWER ORGANIZERS; UNDERSINK MATS; UNDERSINK DRAWER ORGANIZERS; SINK ORGANIZERS; TOWEL STANDS; BED POST ELEVATORS; PLASTIC BINS
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: DRAWER ORGANIZERS; UNDERSINK MATS; REMOVABLE MATS USED IN CABINETS UNDER SINKS; UNDERSINK DRAWER ORGANIZERS; SINK ORGANIZERS; TOWEL STANDS; BED POST SUPPORTS FOR PLACEMENT UNDER THE LEGS OF BED FRAMES TO RAISE FRAME HEIGHT; BED POST ELEVATORS; PLASTIC BINS; NON-METAL CHESTS FOR STORAGEClass 020 for DRAWER ORGANIZERS; REMOVABLE MATS USED IN CABINETS UNDER SINKS; UNDERSINK DRAWER ORGANIZERS; TOWEL STANDS; BED POST SUPPORTS FOR PLACEMENT UNDER THE LEGS OF BED FRAMES TO RAISE FRAME HEIGHT; PLASTIC BINS; NON-METAL CHESTS FOR STORAGE
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 021 for BASKETS FOR DOMESTIC USE, NOT OF METAL; STEMWARE HOLDERS; DISH DRYING RACKS; SHOWER CADDIES
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: BASKETS FOR DOMESTIC USE, NOT OF METAL; STEMWARE HOLDERS; DISH DRYING RACKS; SHOWER CADDIES; SINK ORGANIZERS, NAMELY, SPONGE HOLDERS; GARMENT STORAGE CONTAINERS FOR HOUSEHOLD USEClass 021 for BASKETS FOR DOMESTIC USE, NOT OF METAL; STEMWARE HOLDERS; DISH DRYING RACKS; SHOWER CADDIES; SINK ORGANIZERS, NAMELY, SPONGE HOLDERS; GARMENT STORAGE CONTAINERS FOR HOUSEHOLD USE
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 022 for GARMENT BAGS, COVERS, AND CHESTS FOR 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: GARMENT BAGS, COVERS, AND CHESTS FOR STORAGE; GARMENT BAGS FOR STORAGEClass 022 for GARMENT BAGS FOR STORAGE
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: GREGG A. PARADISE. GREGG A. PARADISE of LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, is located at

      600 SOUTH AVENUE WEST
      WESTFIELD, New Jersey 07090
      US
The docket/reference number is BBB-1172.

The phone number is 908-654-5000.

The fax number is 908-654-7866.

The email address is trademarkadmin@lernerdavid.com

The applicants proposed attorney information: GREGG A. PARADISE. Other appointed attorneys are Ryan L. Bergeron, April M. Capati, Albert J. Chen, Si Chen; Melanie A. Chernoff, Orville R. Cockings, Harvey L Cohen, Robert B. Cohen, Alyssa N. D'Antonio, Jonathan A. David, Sidney David, William A Di Bianca, Jeffrey S. Dickey, Aaron S. Eckenthal, Russell W. Faegenburg, Gregory S. Gewirtz, Keith E. Gilman, Stephen B. Goldman, Kendall K. Gurule; Charles H. Humkey, Kelly Y. Hwang, Joseph H. Karlin, Charles P. Kennedy, Paul H. Kochanski, Kevin M. Kocun, David J. Kohn, Arnold H. Krumholz, Elizabeth A. Lafferty, Daniel P. Laine, Andrew T. Lane, David G. Leach, Joseph S. Littenberg; Stephen M. Lund, Keith J. McWha, Mitesh Mehta, William L. Mentlik, Marcus J. Millet, John R. Nelson, Nahoko Ono, Thomas M. Palisi, Gregg A. Paradise, Wilfred V. Patrick, Bruno Polito, Gregory M. Reilly, Natalie S. Richer, Jordan T. Riviello; Stephen F. Roth, Christian E. Samay, Scott R. Samay, Bruce H. Sales, Dennis M. Smid, Alexander Solo, Michael H. Teschner, Brian R. Tomkins, Tedd W. Van Buskirk, Joseph K. Venier, James A. Vezeris, Lingyan Wang, and Roy H. Wepner. GREGG A. PARADISE of LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, 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

      600 SOUTH AVENUE WEST
      WESTFIELD, New Jersey 07090
      United States
The docket/reference number is BBB-1172.

The phone number is 908-654-5000.

The fax number is 908-654-7866.

The email address is trademarkadmin@lernerdavid.com

GREGG A. PARADISE 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: GREGG A. PARADISE. GREGG A. PARADISE of LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, is located at

      600 SOUTH AVENUE WEST
      WESTFIELD, New Jersey 07090
      US
The docket/reference number is BBB-1172.

The phone number is 908-654-5000.

The fax number is 908-654-7866.

The email address is trademarkadmin@lernerdavid.com

The applicants proposed correspondence information: GREGG A. PARADISE. GREGG A. PARADISE of LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, is located at

      600 SOUTH AVENUE WEST
      WESTFIELD, New Jersey 07090
      United States
The docket/reference number is BBB-1172.

The phone number is 908-654-5000.

The fax number is 908-654-7866.

The email address is trademarkadmin@lernerdavid.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ORGANIZED apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Gregg A. Paradise/     Date: 09/12/2019
Signatory's Name: GREGG A. PARADISE
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER

Signatory's Phone Number: 908.654.5000

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:    GREGG A. PARADISE
   LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
   
   600 SOUTH AVENUE WEST
   WESTFIELD, New Jersey 07090
Mailing Address:    GREGG A. PARADISE
   LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
   600 SOUTH AVENUE WEST
   WESTFIELD, New Jersey 07090
        
Serial Number: 88403893
Internet Transmission Date: Thu Sep 12 17:00:23 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201909121700232
31602-88403893-610355aa52e2715845a86c7c5
ca564cf97196a1ffaed0928a350f41d78bb2cb3-
N/A-N/A-20190912154209232549