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. 88449402 ASAHI WRAP(Standard Characters, see http://uspto.report/TM/88449402/mark.png) has been amended as follows:

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

Applicant thanks the examining attorney for the thorough consideration given the present application.

2(d) likelihood of confusion:

Applicant's ASAHI WRAP mark is refused registration for use with:

Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; Non-woven plastic sheet for cooking; Pens (office requisites); Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites, except furniture; Adhesives for stationery or household purposes; Drawing materials and materials for artists; Paint brushes; Instructional and teaching materials; Plastic sheets, films and bags for wrapping and packaging

because of a likelihood of confusion with the mark ASAHI (stylized) in US Reg. No. 4355903 for use with:

Class 16: Paper and cardboard, industrial packaging containers of paper, food wrapping plastic film for household use, garbage bags of paper for household use, garbage bags of plastics for household use, hygienic hand towels of paper, paper patterns, table cloths of paper, table napkins of paper, towels of paper, hand towels of paper, banners of paper, flags of paper, handkerchiefs of paper, babies diapers of paper, printed matter, painting and calligraphic works, photographs, photograph stands; stationery and study materials, namely, study guide, ball-point pens, mechanical pencils, fountain pens, book covers, note books, memo pads, post cards; pastes and other adhesives for stationery or household purpose

Class 20: Furniture, mirrors, namely, looking glasses, cushions, Japanese floor cushions (Zabuton); industrial packaging containers of wood; industrial packaging containers of bamboo; pillows, mattresses, hand-held flat fans, blinds of reed, rattan or bamboo (Sudare), drinking straws, hand-held folding fans, benches, upright signboards of wood or plastics, advertising balloons, shopping baskets, indoor paper blinds, cradles, infant walkers, picture frames

Class 21: Non-electric cooking pots and pans; non-electric coffee-pots, non-electric Japanese cast iron kettles (Tetsubin), non-electric kettles; tableware not of precious metal, namely, tea services, coffee services, serving spoons, serving fork, serving bowls, dishes, beer mugs not of precious metal, drinking glasses not of precious metal, drinking cups not of precious metal, mugs not of precious metal, decanters not of precious metal; ice pails, non-electric whisks, cooking skewers, non-electric portable coldboxes, cooking strainers, pepper pots, sugar bowls not of precious metal, salt shakers not of precious metal, egg cups not of precious metal, napkin holders not of precious metal, napkin rings not of precious metal, trays for domestic purpose, not of precious metal, toothpick holders not of precious metal, rice chests, colanders, cocktail shaker, Salt and pepper shakers, Japanese style cooked rice scoops (Shamoji), hand-operated coffee grinders and pepper mills, cooking funnels, food preserving jugs of glass, drinking flasks, Japanese style personal dining trays or stands (Zen), bottle openers, cooking graters, tart scoops, baking pan-mats; chopsticks, chopstick cases; ladles for kitchen use; tableware, namely, scoops, cooking sieves and sifters; chopping boards for kitchen use; vacuum bottles, namely, insulated flasks; cooking utensils, namely, grills; toothpicks, citrus juicers, namely, lemon squeezers; non-electric waffle irons; cinder sifters for household purposes; boxes of metal for dispensing paper towels; tailors sprayers, namely, empty spray bottles; piggy banks not of metal, upright signboards of glass or ceramics; perfume burners; portable cooking kits for outdoor use, indoor aquaria and their fittings, namely, ornamental fish tanks, aquariums and aquarium ornaments which are furnished at bars, restaurants and cafes offering food and beverages, artificial aquarium landscapes, aquarium covers, aquarium air stones, aquarium hoods, cosmetic and toilet utensils, namely, combs, comb cases, toilet sponges, toilet brushes, powder puffs, toothbrushes, shaving brushes, shaving brush stands, eyebrow brushes, cosmetic brushes, brushes for cleaning beer mugs, brushes for cleaning tableware, flower pots and flower boxes for plant cultivation

Class 25: Clothing, namely, tee-shirts, Japanese traditional kimono for festival (Happi), jumpers, polo shirts, sweat-shirts, aprons, caps, hats; garters; sock su

As a result of extensive negotiations, applicant and the owner of the cited registration have entered into a detailed Consent Agreement, a copy of which is submitted herewith. In the Agreement, registrant consents to applicant’s registration of the ASAHI WRAP mark and the parties affirm that they are in the best position to determine whether consumer confusion is likely.

When analyzing likelihood of confusion under Section 2(d) of the Trademark Act, an examining attorney may consider different types of evidence, including a consent agreement between an applicant and an owner of a prior registered mark. See TMEP §1207.01. Specifically, an applicant may submit a consent agreement to overcome a bar to registration under Section 2(d). See TMEP §1207.01(c)(viii).

The Federal Circuit has consistently held that a consent agreement between an applicant and an owner of a prior registration should be accorded great weight. The Court has held that the Trademark Office should not substitute its judgment regarding likelihood of confusion for the judgment of the real parties in interest without good reason. See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988)(Court allowed registration based on consent agreement pertaining to identical marks and identical banking services.); Bongrain Int’l Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); In re E.I. DuPont Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

As evidenced by the Consent Agreement entered into by applicant and registrant, there is no likelihood of confusion and applicant's mark should be approved for registration. Withdrawal of the 2(d) likelihood of confusion refusal is respectfully requested.

EVIDENCE
Evidence in the nature of copy of a Consent Agreement has been attached.
Original PDF file:
evi_19235139129-20200113165048322008_._Asahi_ConsentAgreement_20191225.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; Non-woven plastic sheet for cooking; Pens (office requisites); Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites, except furniture; Adhesives for stationery or household purposes; Drawing materials and materials for artists; Paint brushes; Instructional and teaching materials; Plastic sheets, films and bags for wrapping and packaging; Printers' type, printing blocks
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: Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; baking paper, namely, paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; Non-woven plastic sheet for cooking; office requisites, namely, pens; Pens (office requisites); Paper and cardboard; Bookbinding material; Printed matter; Photographs; Adhesives for stationery or household purposes; Paint brushes; Stationery and office requisites, except furniture; Plastic sheets, films and bags for wrapping and packaging; Printers' type, printing blocks; Drawing materials and materials for artists; Instructional and teaching materialsClass 016 for Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; baking paper, namely, paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; office requisites, namely, pens; Paper and cardboard; Bookbinding material; Photographs; Adhesives for stationery or household purposes; Paint brushes; Plastic sheets, films and bags for wrapping and packaging; Printers' type, printing blocks
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: Robert J. Kenney. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      US
The docket/reference number is 0071-0919US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

The applicants proposed attorney information: Robert J. Kenney. Other appointed attorneys are Paul C. Lewis; Michael K. Mutter; Michael T. Smith; Chad J. Billings. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, 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

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      United States
The docket/reference number is 0071-0919US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

Robert J. Kenney 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: ROBERT J. KENNEY. ROBERT J. KENNEY of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      US
The docket/reference number is 0071-0919US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

The applicants proposed correspondence information: Robert J. Kenney. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      United States
The docket/reference number is 0071-0919US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

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


SIGNATURE(S)
Response Signature
Signature: /Robert J. Kenney/     Date: 01/14/2020
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 7032058000

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:    ROBERT J. KENNEY
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
Mailing Address:    Robert J. Kenney
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
        
Serial Number: 88449402
Internet Transmission Date: Tue Jan 14 09:57:06 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202001140957064
22508-88449402-7001441171b63bb46d5cf1325
af78ae674fc4a4b9e97a51959f59cfb78c347b6c
ab-N/A-N/A-20200113165048322008