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. 88407702 GEORGE NELSON(Standard Characters, see http://uspto.report/TM/88407702/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION Ser. No. 88407702 Applicant hereby responds to the Office Action dated July 11, 2019 requiring that a statement be made regarding whether the mark contains the name of a living individual whose consent is of record. By amendment, Applicant has added to its application a statement that the mark does not identify a particular living individual. Applicant submits it has now adequately responded to this requirement. In the Office Action the Application also was rejected pursuant to Section 2(d) of the Trademark Act on the ground that the Applicant?s mark is likely to cause confusion with the mark shown in U.S. Reg. No. 4900066 (?006 registration) owned by the George Nelson Foundation. Applicant hereby requests that further action on this application be suspended pending resolution of a case currently pending in the Circuit Court of Cook County, Illinois, County Department Law Division, Case No. 2017L8151 (the ?Illinois Action?) entitled PATRICE NELSON, AS PERSONAL REPRESENTATIVE OF THE ESTATE OF JACQUELINE NELSON AND GEORGES MICO NELSON, DVM, INDIVIDUALLY AND AS SOLE RESIDUARY BENEFICIARY OF THE ESTATE OF JACQUELINE NELSON V. KATTEN MUCHIN ROSENMAN LLP, WILLIAM J. DORSEY, COWEN, LEIBOWITZ & LATMAN, P.C., ROBERT GIORDANELLA, AND THE GEORGE NELSON FOUNDATION. (? The Amended Complaint.?) A copy of the Amended Complaint filed in this matter is attached. The Amended Complaint is filed inter alia by Applicant as sole heir to the estate of his mother Jacqueline Nelson. Jacqueline Nelson inherited certain intellectual property including the trademark GEORGE NELSON (collectively the ?Nelson IP?). George Nelson, Applicant?s deceased father, was a world renowned designer. When he died, all the rights in intellectual property which he held, including to the Nelson IP and GEORGE NELSON mark passed to his widow Jacqueline Nelson who also is now deceased. The Amended Complaint alleges that at the end of her life Jacqueline Nelson was fraudulently induced to sign an assignment of the Nelson IP, including the GEORGE NELSON trademark, to the GEORGE NELSON FOUNDATION, which is the registrant and owner of the ?006 registration cited by the Trademark Examiner in the Office Action. The relief sought by The Amended Complaint includes reformation of the fraudulently obtained assignment of Nelson IP including the GEORGE NELSON trademark such that the Nelson IP is returned to the estate of Applicant? s mother Jacqueline Nelson, to which he is the sole heir, or alternatively that a constructive trust be imposed upon the Nelson IP in order that the rights therein inure to the benefit of Jacqueline Nelson?s estate. The pending Illinois lawsuit is clearly relevant to the registrability of Applicant?s mark. Applicant respectfully requests that this instant application be suspended pending the outcome of the Illinois Action.

EVIDENCE
Evidence in the nature of Amended Complaint in case currently pending in the Circuit Court of Cook County, Illinois, County Department Law Division, Case No. 2017L8151 (the Illinois Action) entitled PATRICE NELSON, AS PERSONAL REPRESENTATIVE OF THE ESTATE OF JACQUELINE NELSON AND GEORGES MICO NELSON, DVM, INDIVIDUALLY AND AS SOLE RESIDUARY BENEFICIARY OF THE ESTATE OF JACQUELINE NELSON V. KATTEN MUCHIN ROSENMAN LLP, WILLIAM J. DORSEY, COWEN, LEIBOWITZ & LATMAN, P.C., ROBERT GIORDANELLA, AND THE GEORGE NELSON FOUNDATION. has been attached.
Original PDF file:
evi_9768143110-20200113154357453640_._FS_Amended_Complaint_w.exhibits.pdf
Converted PDF file(s) ( 79 pages)
Evidence-1
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Evidence-79

The applicant's current attorney information: Donna A. Tobin. Donna A. Tobin of Royer Cooper Cohen Braunfeld, is located at

      1120 Avenue of the Americas
      New York, New York 10036
      US
The docket/reference number is 025889.0300.

The phone number is 212-980-0120.

The fax number is (212) 593-9175.

The email address is pto@fkks.com

The applicants proposed attorney information: Donna A. Tobin. Other appointed attorneys are Julie Latsko. Donna A. Tobin of Royer Cooper Cohen Braunfeld, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      4th floor
      1120 Avenue of the Americas
      New York, New York 10036
      United States
The docket/reference number is 025889.0300.

The phone number is 212-994-0454.

The fax number is 464 362-2630.

The email address is trademarks@rccblaw.com

Donna A. Tobin 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: DONNA A. TOBIN. DONNA A. TOBIN of Royer Cooper Cohen Braunfeld, is located at

      1120 Avenue of the Americas
      New York, New York 10036
      US
The docket/reference number is 025889.0300.

The phone number is 212 994-0454.

The email address is Trademarks@rccblaw.com; dtobin@rccblaw.com

The applicants proposed correspondence information: Donna A. Tobin. Donna A. Tobin of Royer Cooper Cohen Braunfeld, is located at

      4th floor
      1120 Avenue of the Americas
      New York, New York 10036
      United States
The docket/reference number is 025889.0300.

The phone number is 212-994-0454.

The fax number is 464 362-2630.

The email address is trademarks@rccblaw.com; dtobin@rccblaw.com

ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.


SIGNATURE(S)
Response Signature
Signature: /Donna A. Tobin/     Date: 01/13/2020
Signatory's Name: Donna A. Tobin
Signatory's Position: Attorney of Record New York State Bar Member

Signatory's Phone Number: 2129940454

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:    DONNA A. TOBIN
   Royer Cooper Cohen Braunfeld
   
   1120 Avenue of the Americas
   New York, New York 10036
Mailing Address:    Donna A. Tobin
   Royer Cooper Cohen Braunfeld
   4th floor
   1120 Avenue of the Americas
   New York, New York 10036
        
Serial Number: 88407702
Internet Transmission Date: Mon Jan 13 15:55:35 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020011315553558
9001-88407702-7005ed47c8a3c21b983e4a5fe4
b78dca6cf80d52b681e5f1c3c55ad29f9c362a12
-N/A-N/A-20200113154357453640