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. 88407735 LAGUNA (Stylized and/or with Design, see http://uspto.report/TM/88407735/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: LAGUNA (Stylized and/or with Design, see http://uspto.report/TM/88407735/mark.png)
Proposed: LAGUNA EYEWEAR (Stylized and/or with Design, see mark)
The color(s) orange and white is/are claimed as a feature of the mark.
The mark consists of a circular image shaded orange with the top portion carved out and hanging above the remaining section of the circle containing the wording "Laguna" in stylized white font with the bottom of the letter "L" in Laguna extending to form a line border under the entire word "Laguna" which is above the word "EYEWEAR" in white font centered within the circle.

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

Applicant has corrected all issues raised in the USPTO action letter by clarifying the classification of goods and services recommended by the USPTO; adding the disclaimer recommended by the USPTO; and submitting a modified mark that eliminates the risk or likelihood of confusion with pending U.S. Application Serial No. 8783869.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Eyewear consisting of Reading Glasses, Sunglasses and accessories

Applicant hereby adds the following class of goods/services to the application:
New: Class 003 (Original Class: 009 ) for Eyewear accessories, namely, cleaning kits comprised of cleaning fluid and a cleaning cloth; Eyewear consisting of reading glasses, sunglasses and related accessories, namely, eyewear cases, eyewear retainers, sunglass chains and cords; Eyewear accessories, namely, decorative charms for eyewear
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 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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.

The applicant hereby appoints Ghassan Hasan, Esq.. Ghassan Hasan, Esq. of Law Office of Ghassan O. Hasan, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      43 Corporate Park
      43 Corporate Park, Suite 201
      Irvine, California 92606
      United States
to submit this Response to Office Action Form on behalf of the applicant.

The phone number is 949-966-0266.

The fax number is 949-966-0355.

The email address is ghasan@gohesquire.com

Ghassan Hasan, Esq. 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: HESHAM ELMISHED. HESHAM ELMISHED of SIMPLY CASUAL INC., is located at

      358 BLUEBIRD CANYON DRIVE
      LAGUNA BEACH, California 92651
      US

The phone number is 203-807-0766.

The email address is helmished@gmail.com

The applicants proposed correspondence information: Ghassan Hasan, Esq.. Ghassan Hasan, Esq. of Law Office of Ghassan O. Hasan, is located at

      43 Corporate Park
      43 Corporate Park, Suite 201
      Irvine, California 92606
      United States

The phone number is 949-966-0266.

The fax number is 949-966-0355.

The email address is ghasan@gohesquire.com

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


SIGNATURE(S)
Response Signature
Signature: /Ghassan O. Hasan/     Date: 10/18/2019
Signatory's Name: Ghassan O. Hasan, Esq.
Signatory's Position: Attorney for Laguna Eyewear

Signatory's Phone Number: 949-966-0266

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:    HESHAM ELMISHED
   SIMPLY CASUAL INC.
   
   358 BLUEBIRD CANYON DRIVE
   LAGUNA BEACH, California 92651
Mailing Address:    Ghassan Hasan, Esq.
   Law Office of Ghassan O. Hasan
   43 Corporate Park
   43 Corporate Park, Suite 201
   Irvine, California 92606
        
Serial Number: 88407735
Internet Transmission Date: Fri Oct 18 15:48:22 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019101815482272
9883-88407735-6102af46c3a7d4646c43514d5d
181384329b73484d08ad3c118f8a34b3192de5-N
/A-N/A-20191018144741168492