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)

---

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. 88474148 KANEBO(Standard Characters, see http://uspto.report/TM/88474148/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Bladed or pointed hand tools, namely, scissors, knives, razors, hand-operated hair clippers and hand operated cutting tools; eyelash curlers; pedicure sets; manicure sets; tweezers; cuticle nippers; nail files; electric or non-electric nail polishers
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Bladed or pointed hand tools, namely, scissors, knives, razors, hand-operated hair clippers and hand operated cutting tools; Bladed or pointed hand tools, namely, scissors, knives for hobby use, knives being tableware, razors, hand-operated hair clippers and hand operated cutting tools; eyelash curlers; pedicure sets; manicure sets; tweezers; cuticle nippers; nail files; electric or non-electric nail polishersClass 008 for Bladed or pointed hand tools, namely, scissors, knives for hobby use, knives being tableware, razors, hand-operated hair clippers and hand operated cutting tools; eyelash curlers; pedicure sets; manicure sets; tweezers; cuticle nippers; nail files; electric or non-electric nail polishers
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Bags, namely, folding briefcases, shoulder bags, Gladstone bags, briefcases, suitcases, carry-on bags, trunks, handbags, Boston bags, backpacks, rucksacks, cosmetic bags sold empty, reusable shopping bags and wheeled shopping bags; pouches, namely, purses, key cases, wallets, ticket pouches and business card cases; vanity cases sold empty
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Bags, namely, folding briefcases, shoulder bags, Gladstone bags, briefcases, suitcases, carry-on bags, trunks, handbags, Boston bags, backpacks, rucksacks, cosmetic bags sold empty, reusable shopping bags and wheeled shopping bags; Bags, namely, folding briefcases, shoulder bags, Gladstone bags, briefcases, suitcases, carry-on bags, travelling trunks; trunks being luggage, handbags, Boston bags, backpacks, rucksacks, cosmetic bags sold empty, reusable shopping bags and wheeled shopping bags; pouches, namely, purses, key cases, wallets, ticket pouches and business card cases; vanity cases sold emptyClass 018 for Bags, namely, folding briefcases, shoulder bags, Gladstone bags, briefcases, suitcases, carry-on bags, travelling trunks; trunks being luggage, handbags, Boston bags, backpacks, rucksacks, cosmetic bags sold empty, reusable shopping bags and wheeled shopping bags; pouches, namely, purses, key cases, wallets, ticket pouches and business card cases; vanity cases sold empty
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or 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, coats, sweaters, shirts, nightwear, underwear, swimwear, swimming caps, camisoles, T-shirts, kimonos, obis, sleep masks, aprons, collar protectors, socks, stockings, puttees, gaiters, fur stoles, shawls, scarves, gloves, mittens, neckties, neckerchieves, thermal supporters, namely, thermal socks and thermal underwear, mufflers, ear muffs, nightcaps and headwear; footwear
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing, namely, coats, sweaters, shirts, nightwear, underwear, swimwear, swimming caps, camisoles, T-shirts, kimonos, obis, sleep masks, aprons, collar protectors, socks, stockings, puttees, gaiters, fur stoles, shawls, scarves, gloves, mittens, neckties, neckerchieves, thermal supporters, namely, thermal socks and thermal underwear, mufflers, ear muffs, nightcaps and headwear; Clothing, namely, coats, sweaters, shirts, nightwear, underwear, swimwear, swimming caps, camisoles, T-shirts, kimonos, obis, sleep masks, aprons, collar protector strips for application to clothing collars; collar protector pads for application to clothing collars, socks, stockings, puttees, gaiters, fur stoles, shawls, scarves, gloves, mittens, neckties, neckerchieves, thermal supporters, namely, thermal socks and thermal underwear, mufflers as neck scarves, ear muffs, nightcaps and headwear; footwearClass 025 for Clothing, namely, coats, sweaters, shirts, nightwear, underwear, swimwear, swimming caps, camisoles, T-shirts, kimonos, obis, sleep masks, aprons, collar protector strips for application to clothing collars; collar protector pads for application to clothing collars, socks, stockings, puttees, gaiters, fur stoles, shawls, scarves, gloves, mittens, neckties, neckerchieves, thermal supporters, namely, thermal socks and thermal underwear, mufflers as neck scarves, ear muffs, nightcaps and headwear; footwear
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 5607529 registered 08/16/2013 with a renewal date of __________ and an expiration date of 08/16/2023 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current attorney information: Bassam N. Ibrahim. Bassam N. Ibrahim of BUCHANAN INGERSOLL & ROONEY PC, is located at

      1737 KING STREET, SUITE 500
      ALEXANDRIA, Virginia 22314
      US
The docket/reference number is 0080279-613.

The phone number is 703-836-6620.

The fax number is 703.836.2021.

The email address is bassam.ibrahim@bipc.com

The applicants proposed attorney information: Bassam N. Ibrahim. Other appointed attorneys are Bryce J. Maynard, Laura K. Pitts, and all other attorneys of the firm. Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1737 King Street, Suite 500
      Alexandria, Virginia 22314
      United States
The docket/reference number is 0080279-613.

The phone number is 703-836-6620.

The fax number is 703.836.2021.

The email address is bassam.ibrahim@bipc.com

Bassam N. Ibrahim 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: BASSAM N. IBRAHIM. BASSAM N. IBRAHIM of BUCHANAN INGERSOLL & ROONEY PC, is located at

      1737 KING STREET, SUITE 500
      ALEXANDRIA, Virginia 22314
      US
The docket/reference number is 0080279-613.

The phone number is 703-836-6620.

The fax number is 703.836.2021.

The email address is bassam.ibrahim@bipc.com

The applicants proposed correspondence information: Bassam N. Ibrahim. Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC, is located at

      1737 King Street, Suite 500
      Alexandria, Virginia 22314
      United States
The docket/reference number is 0080279-613.

The phone number is 703-836-6620.

The fax number is 703.836.2021.

The email address is bassam.ibrahim@bipc.com

SIGNATURE(S)
Response Signature
Signature: /Bassam N Ibrahim/ /s/     Date: 02/07/2020
Signatory's Name: Bassam N. Ibrahim
Signatory's Position: Attorney of Record, VA Bar Member

Signatory's Phone Number: 7038366620

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:    BASSAM N. IBRAHIM
   BUCHANAN INGERSOLL & ROONEY PC
   
   1737 KING STREET, SUITE 500
   ALEXANDRIA, Virginia 22314
Mailing Address:    Bassam N. Ibrahim
   Buchanan Ingersoll & Rooney PC
   1737 King Street, Suite 500
   Alexandria, Virginia 22314
        
Serial Number: 88474148
Internet Transmission Date: Fri Feb 07 14:54:40 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202002071454407
60821-88474148-700e927e9d1b22fac3294b57d
51d08858c4674feef3d145e6e6df385bfa12ff6-
N/A-N/A-20200207144106626689