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. 88497483 STUDIO JCP HOME(Standard Characters, see http://uspto.report/TM/88497483/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of the present application on the basis of likelihood of confusion with the mark in U.S. Registration No. 4913488. In response, Applicant respectfully traverses the refusal and asserts that such refusal is inappropriate because the applicant and the registrant, though separate legal entities, constitute a single source. The Applicant, J. C. Penney Purchasing Corporation, has applied to register STUDIO JCP HOME for a wide variety of goods in International Classes 4, 8, 11, 14, 16, 20, 21, 24 and 27. The cited registered mark, owned by J. C. Penney Corporation, Inc., is JCP for ?Retail department store services, retail mail order catalog services, and computerized online retail department store services in the fields of cosmetics, jewelry, luggage, handbags, furniture, picture frames, lamps, dinnerware, glassware, wearing apparel and footwear for men, women, and children, bedding, window coverings and window hardware, towels, table linens, rugs, exercise equipment, pet accessories, small electric appliances,? in Class 35. The Examining Attorney has deemed there to be a likelihood of confusion. In general, registration of confusingly similar marks to separate legal entities is barred by Section 2(d) of the Trademark Act. However, the Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant?s goods because of the resemblance of the applicant?s mark to the mark of the other company. In re Wella A.G., 787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986) and TMEP Section 1201.07(a). In the present case, the Applicant, J. C. Penney Purchasing Corporation, is a wholly-owned subsidiary of J. C. Penney Corporation, Inc. (the owner of the cited registration.) The corporation intentionally structures ownership of its intellectual property in a certain way. For example, trademark applications which cover goods which are offered for sale, e.g., clothing, jewelry, home goods, etc., are owned by J. C. Penney Purchasing Corporation. Trademark applications which identify retail department store and online retail department stores services (in Class 35) are owned by J. C. Penney Corporation, Inc. Applicant contends that the close relationship between the related companies, i.e., parent and wholly owned subsidiary, obviates any likelihood of confusion in the public mind because the related companies constitute a single source. See TMEP Section 1207.07(a) ? (b). Pursuant to TMEP Section 1201.07(b)(i): If the applicant or the applicant?s attorney represents that either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply to an individual who owns all the stock of a corporation, and to a corporation and a wholly owned subsidiary or a subsidiary of a wholly owned subsidiary. In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence. In light of the above, Applicant respectfully requests that the refusal of registration on the basis of likelihood of confusion with the mark in U.S. Registration No. 4913488 be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 004 for Candles

Applicant hereby deletes the following class of goods/services from the application.
Class 008 for Cutlery

Applicant hereby deletes the following class of goods/services from the application.
Class 011 for Lamps and decorative lanterns

Applicant hereby deletes the following class of goods/services from the application.
Class 014 for Clocks

Applicant hereby deletes the following class of goods/services from the application.
Class 016 for Framed art and printed art reproductions

Applicant hereby deletes the following class of goods/services from the application.
Class 020 for Shower curtain hooks and rods; tissue box covers; pillows; decorative pillows; mattress pads and mattress toppers; decorative accessories, mirrors, picture frames, wall art; furniture; blinds, shades, drapery hardware, namely, traverse rods, poles, curtain hooks, curtain rods, finials and brackets

Applicant hereby deletes the following class of goods/services from the application.
Class 021 for Soap dishes, wastebaskets; toothbrush holders; hampers; decorative baskets; dishes; dinnerware; glassware; food storage and serving utensils

Applicant hereby deletes the following class of goods/services from the application.
Class 027 for Carpets, rugs, bath mats, and wall hangings

Applicant proposes to amend the following:
Current: Class 024 for Towels, shower curtains and shower liners; sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; table linens, napkins; curtains, drapes and valances
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: Towels, shower curtains and shower liners; Towels, shower curtains and shower curtain liners; sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; bed sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; table linens, napkins; table linens, napkins of textile; curtains, drapes and valances; curtains, drapery and fabric valancesClass 024 for Towels, shower curtains and shower curtain liners; bed sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; table linens, napkins of textile; curtains, drapery and fabric valances
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: J. C. PENNEY PURCHASING CORPORATION, a corporation of New York, having an address of
      6501 Legacy Drive
      Plano, Texas 75024
      United States

Proposed: J. C. PENNEY PURCHASING CORPORATION, a corporation of New York, having an address of
      6501 Legacy Drive
      Plano, Texas 75024
      United States
      Email Address: trademarks-sm@jcp.com

The owner's/holder's current attorney information: Stephanie Lewis-Bullitt. Stephanie Lewis-Bullitt, is located at

      6501 LEGACY DRIVE
      PLANO, Texas 75024
      United States
      The phone number is 972-431-1000.
      The email address is TRADEMARKS-SM@JCP.COM

The owner's/holder's proposed attorney information: Stephanie Lewis-Bullitt. Stephanie Lewis-Bullitt, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6501 LEGACY DRIVE
      PLANO, Texas 75024
      United States
      The phone number is 9724311000.
      The email address is slewisbu@jcp.com

Stephanie Lewis-Bullitt 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.Correspondence Information (current):
      STEPHANIE LEWIS-BULLITT
      PRIMARY EMAIL FOR CORRESPONDENCE: TRADEMARKS-SM@JCP.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Stephanie Lewis-Bullitt
      PRIMARY EMAIL FOR CORRESPONDENCE: slewisbu@jcp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "STUDIO" and "HOME" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /stephanie lewis-bullitt/     Date: 02/28/2020
Signatory's Name: Stephanie Lewis-Bullitt
Signatory's Position: Attorney of record, Texas Bar member

Signatory's Phone Number: 9724311000

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:    STEPHANIE LEWIS-BULLITT
   
   
   6501 LEGACY DRIVE
   PLANO, Texas 75024
Mailing Address:    Stephanie Lewis-Bullitt
   6501 LEGACY DRIVE
   PLANO, Texas 75024
        
Serial Number: 88497483
Internet Transmission Date: Fri Feb 28 15:27:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020022815274241
1670-88497483-7103cba177159878ef7f51ab4c
7c11fdd771914872080c1101dc51b191dc5de-N/
A-N/A-20200228145926871045