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. 88416806 THE(Standard Characters, see http://uspto.report/TM/88416806/mark.png) has been amended as follows:

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

The Examining Attorney issued an Office Action in connection with the instant Application on August 28, 2019, refusing registration based on the following claims: A) the specimen that Applicant submitted when it filed the initial Application on May 6, 2019 does not show the mark in the drawing in use in commerce; and B) the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of Applicant's goods and to identify and distinguish them from others. Applicant hereby responds to the Office Action by A) submitting a substitute specimen for Class 25; and B) requesting that the filing basis for Class 18 be amended to intent-to-use. Applicant respectfully requests that the Application now be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Handbags; knapsacks; back packs; rucksacks; tote bags; beach bags; carry-all bags; satchels; clutch bags; shoulder bags; sling bags; purses; cosmetic bags sold empty; change purses; wallets; leather pouches; business card cases; credit card cases; toiletry cases sold empty; crossbody bags; traveling bags
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/03/2018 and first used in commerce at least as early as 12/03/2018 , and is now in use in such commerce.

Proposed: Class 018 for Handbags; knapsacks; back packs; rucksacks; tote bags; beach bags; carry-all bags; satchels; clutch bags; shoulder bags; sling bags; purses; cosmetic bags sold empty; change purses; wallets; leather pouches; business card cases; credit card cases; toiletry cases sold empty; crossbody bags; traveling bags
Deleted Filing Basis: 1(a)
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 025 for Clothing, namely, underwear, socks, hosiery, jerseys, shirts, t-shirts, blouses, sweaters, cardigan sweaters, pullovers, hoodies, sweatshirts, pants, jeans, shorts, dresses, skirts, blazers, jackets, coats, overcoats, waterproof clothing, namely, jackets and jumpsuits; bathing suits; belts; scarves; shawls; bandanas; waistcoats; pajamas; footwear, namely, shoes, boots, sandals and slippers; headwear, namely, hats and caps
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/03/2018 and first used in commerce at least as early as 12/03/2018 , and is now in use in such commerce.

Proposed: Class 025 for Clothing, namely, underwear, socks, hosiery, jerseys, shirts, t-shirts, blouses, sweaters, cardigan sweaters, pullovers, hoodies, sweatshirts, pants, jeans, shorts, dresses, skirts, blazers, jackets, coats, overcoats, waterproof clothing, namely, jackets and jumpsuits; bathing suits; belts; scarves; shawls; bandanas; waistcoats; pajamas; footwear, namely, shoes, boots, sandals and slippers; headwear, namely, hats and caps
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/03/2018 and first used in commerce at least as early as 12/03/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 025 . The specimen(s) submitted consists of a photograph of a sweater displaying the trademark .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

The applicant's current attorney information: Jessica G. Kraver. Jessica G. Kraver of KATTEN MUCHIN ROSENMAN LLP, is located at

      575 MADISON AVENUE
      NEW YORK, New York 10022
      US
The docket/reference number is 384831-TBD.

The phone number is 212-940-8800.

The fax number is 212-940-8776.

The email address is jessica.kraver@kattenlaw.com

The applicants proposed attorney information: Jessica G. Kraver. Other appointed attorneys are Karen Artz Ash, Bret J. Danow, Jan Tamulewicz, Virginia F. Mann, Alexandra R. Caleca, Jerry Jakubovic and others. Jessica G. Kraver of KATTEN MUCHIN ROSENMAN 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

      575 MADISON AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 384831-01278.

The phone number is 212-940-8800.

The fax number is 212-894-5765.

The email address is jessica.kraver@katten.com

Jessica G. Kraver 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: JESSICA G. KRAVER. JESSICA G. KRAVER of KATTEN MUCHIN ROSENMAN LLP, is located at

      575 MADISON AVENUE
      NEW YORK, New York 10022
      US
The docket/reference number is 384831-TBD.

The phone number is 212-940-8800.

The fax number is 212-940-8776.

The email address is jessica.kraver@kattenlaw.com; alexandra.caleca@kattenlaw.com; julie.libal@kattenlaw.com; ian.farias@kattenlaw.com

The applicants proposed correspondence information: Jessica G. Kraver. Jessica G. Kraver of KATTEN MUCHIN ROSENMAN LLP, is located at

      575 MADISON AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 384831-01278.

The phone number is 212-940-8800.

The fax number is 212-894-5765.

The email address is jessica.kraver@katten.com; karen.ash@katten.com; alexandra.caleca@katten.com; ian.farias@katten.com; julie.libal@katten.com

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: /Phillips Nazro/      Date: 02/12/2020
Signatory's Name: Phillips Nazro
Signatory's Position: Assistant Secretary
Signatory's Phone Number: 6468802095


Response Signature
Signature: /Karen Artz Ash/     Date: 02/12/2020
Signatory's Name: Karen Artz Ash
Signatory's Position: Attorney of Record

Signatory's Phone Number: 212-940-8554

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:    JESSICA G. KRAVER
   KATTEN MUCHIN ROSENMAN LLP
   
   575 MADISON AVENUE
   NEW YORK, New York 10022
Mailing Address:    Jessica G. Kraver
   KATTEN MUCHIN ROSENMAN LLP
   575 MADISON AVENUE
   NEW YORK, New York 10022
        
Serial Number: 88416806
Internet Transmission Date: Wed Feb 12 14:19:47 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020021214194715
3413-88416806-7001ef66227adeaf9529f7d816
d8cba575610327e12ca23e8394729d6596913fcc
1-N/A-N/A-20200212115430681789