| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88454841 |
| LAW OFFICE ASSIGNED | LAW OFFICE 123 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88454841/mark.png |
| LITERAL ELEMENT | SUPERSOFT |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| OWNER SECTION (current) | |
| NAME | Royal Paper Converting, LLC |
| INTERNAL ADDRESS | #6 |
| STREET | 711 North 17th Avenue |
| CITY | Phoenix |
| STATE | Arizona |
| ZIP/POSTAL CODE | 85007 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Royal Paper Converting, LLC |
| INTERNAL ADDRESS | #6 |
| STREET | 711 North 17th Avenue |
| CITY | Phoenix |
| STATE | Arizona |
| ZIP/POSTAL CODE | 85007 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| samir@royalpaperconverting.com | |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION This is in response to the Office Action that issued on September 3, 2019. Remarks 1. Section 2(d) Refusal Registration has been refused under Trademark Act Section 2(d), on the grounds that Applicant’s applied-for mark is allegedly likely to be confused with the mark Ashley Super Soft of U.S. registration no. 4,769,953. Applicant respectfully traverses this rejection, and notes that the applied-for mark differs from the registered mark in that the applied-for mark includes the single term SUPERSOFT in fanciful, stylized lettering. Applicant also notes that the registration claims a first use date of December 2, 2014 and a first use in commerce date of February 2, 2015, whereas Applicant’s respective dates are much earlier. Further, Applicant has been unable to find evidence that the registered mark is currently in use. Therefore, Applicant is filing today a Petition for Cancellation of the cited registration. In view of this, if the Examiner does not approve this application for publication for opposition, Applicant hereby respectfully requests that this application be suspended pending the outcome of the Cancellation proceeding. 2. Section 2(e)(1) Refusal Registration has also been refused under Trademark Act Section 2(e)(1), on the grounds that Applicant’s mark is allegedly merely descriptive of the recited goods. Applicant respectfully traverses this rejection on the grounds that the mark is suggestive and not merely descriptive of the goods recited in the application, as discussed below. The refusal fails to take into consideration the distinctive features of Applicant’s mark, such as the stylized, angled lettering with a bubble border around the wording SUPERSOFT, and ignores that the mark as a whole creates a commercial impression separate and apart from the impression made by the wording itself. This is not a situation where there is lettering with minimal stylization, but rather the mark includes quite a bit of stylization and design. As a result, the relevant purchasing public will view the mark as the unitary mark SUPERSOFT (a single word) including the fanciful, stylized, angled lettering with a bubble border around the wording. As recognized in the Office Action, combining two words into a unitary mark is a practice with which consumers are familiar. In doing so, the components of the mark often lose their descriptive meaning in relation to the goods and/or services. Even if the mark conveyed some meaning about the goods offered by Applicant, this does not bar registration. See TMEP §1209.01(a) (“[a] designation does not have to be devoid of all meaning in relation to the goods/services to be registrable”). In summary, Applicant’s mark is suggestive and not merely descriptive of its recited services. Moreover, any doubt must be resolved in favor of Applicant. See, e.g. In re The Gracious Lady Service, Inc., 175 U.S. P.Q. 380 (TTAB 1972). Therefore, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and this application be approved for publication. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Susan Stone Rosenfield |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | FENNEMORE CRAIG, P.C. |
| INTERNAL ADDRESS | SUITE 600 |
| STREET | 2394 EAST CAMELBACK ROAD |
| CITY | PHOENIX |
| STATE | Arizona |
| POSTAL CODE | 85016-3429 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 602-916-5317 |
| FAX | 602-916-5517 |
| ip@fclaw.com | |
| DOCKET/REFERENCE NUMBER | 030524.0031 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Susan Stone Rosenfield |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | FENNEMORE CRAIG, P.C. |
| INTERNAL ADDRESS | SUITE 600 |
| STREET | 2394 EAST CAMELBACK ROAD |
| CITY | PHOENIX |
| STATE | Arizona |
| POSTAL CODE | 85016-3429 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 602-916-5317 |
| FAX | 602-916-5517 |
| ip@fclaw.com | |
| DOCKET/REFERENCE NUMBER | 030524.0031 |
| OTHER APPOINTED ATTORNEY | Stacie K. Smith and the attorneys of Fennemore Craig, P.C. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | SUSAN STONE ROSENFIELD |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ip@fclaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 030524.0031 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Susan Stone Rosenfield |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ip@fclaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 030524.0031 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Susan Stone Rosenfield/ |
| SIGNATORY'S NAME | Susan Stone Rosenfield |
| SIGNATORY'S POSITION | Attorney of record, Arizona bar member |
| DATE SIGNED | 03/03/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Mar 03 21:49:11 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0200303214911454583-88454 841-710c5bd927c1ca244a3ea 47e86603611ee46eadad096b1 b224818e876e7acd21-N/A-N/ A-20200303181720465023 |
| 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
This is in response to the Office Action that issued on September 3, 2019.
Remarks
1. Section 2(d) Refusal
Registration has been refused under Trademark Act Section 2(d), on the grounds that Applicant’s applied-for mark is allegedly likely to be confused with the mark Ashley Super Soft of U.S. registration no. 4,769,953. Applicant respectfully traverses this rejection, and notes that the applied-for mark differs from the registered mark in that the applied-for mark includes the single term SUPERSOFT in fanciful, stylized lettering. Applicant also notes that the registration claims a first use date of December 2, 2014 and a first use in commerce date of February 2, 2015, whereas Applicant’s respective dates are much earlier. Further, Applicant has been unable to find evidence that the registered mark is currently in use. Therefore, Applicant is filing today a Petition for Cancellation of the cited registration. In view of this, if the Examiner does not approve this application for publication for opposition, Applicant hereby respectfully requests that this application be suspended pending the outcome of the Cancellation proceeding.
2. Section 2(e)(1) Refusal
Registration has also been refused under Trademark Act Section 2(e)(1), on the grounds that Applicant’s mark is allegedly merely descriptive of the recited goods. Applicant respectfully traverses this rejection on the grounds that the mark is suggestive and not merely descriptive of the goods recited in the application, as discussed below. The refusal fails to take into consideration the distinctive features of Applicant’s mark, such as the stylized, angled lettering with a bubble border around the wording SUPERSOFT, and ignores that the mark as a whole creates a commercial impression separate and apart from the impression made by the wording itself. This is not a situation where there is lettering with minimal stylization, but rather the mark includes quite a bit of stylization and design. As a result, the relevant purchasing public will view the mark as the unitary mark SUPERSOFT (a single word) including the fanciful, stylized, angled lettering with a bubble border around the wording. As recognized in the Office Action, combining two words into a unitary mark is a practice with which consumers are familiar. In doing so, the components of the mark often lose their descriptive meaning in relation to the goods and/or services. Even if the mark conveyed some meaning about the goods offered by Applicant, this does not bar registration. See TMEP §1209.01(a) (“[a] designation does not have to be devoid of all meaning in relation to the goods/services to be registrable”). In summary, Applicant’s mark is suggestive and not merely descriptive of its recited services. Moreover, any doubt must be resolved in favor of Applicant. See, e.g. In re The Gracious Lady Service, Inc., 175 U.S. P.Q. 380 (TTAB 1972). Therefore, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and this application be approved for publication.