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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88499514 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 109 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88499514/mark.png |
| LITERAL ELEMENT |
COOKS JCPENNEY HOME |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| The Examining Attorney has refused registration of the present application on the basis of likelihood of confusion with the marks in U.S.
Registration Nos. 4950068 and 4950072. 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 COOKS JCPENNEY HOME for goods in International Classes 8, 11, 21 and
24. The cited registered marks, owned by J. C. Penney Corporation, Inc., are "JCPenney" 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 registrations.) 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 marks in U.S. Registration Nos. 4950068 and 4950072 be withdrawn. |
| GOODS AND/OR SERVICES SECTION (008)(current) |
| INTERNATIONAL CLASS |
008 |
| DESCRIPTION |
Cutlery |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (008)(proposed) |
| INTERNATIONAL CLASS |
008 |
| TRACKED TEXT DESCRIPTION |
Cutlery; Table cutlery, kitchen knives |
| FINAL DESCRIPTION |
Table cutlery, kitchen knives |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (011)(current) |
| INTERNATIONAL CLASS |
011 |
| DESCRIPTION |
| Small electrics, griddles, fryers, slow cookers, coffee and tea makers |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (011)(proposed) |
| INTERNATIONAL CLASS |
011 |
| TRACKED TEXT DESCRIPTION |
Small electrics, griddles, fryers, slow cookers, coffee and tea makers; Small electric appliances, namely, griddles, fryers, skillets, electric kettles, grills, toasters and toaster ovens, slow cookers, pressure cookers, waffle makers, coffee makers, rice cookers,
roasters, chafing dishes, air fryers |
| FINAL DESCRIPTION |
| Small electric appliances, namely, griddles, fryers, skillets, electric kettles, grills, toasters and toaster ovens, slow cookers,
pressure cookers, waffle makers, coffee makers, rice cookers, roasters, chafing dishes, air fryers |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (021)(current) |
| INTERNATIONAL CLASS |
021 |
| DESCRIPTION |
| Dishes, dinnerware, food storage, serving utensils, cookware and bakeware |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (021)(proposed) |
| INTERNATIONAL CLASS |
021 |
| TRACKED TEXT DESCRIPTION |
Dishes, dinnerware, food storage, serving utensils, cookware and bakeware; Household containers for food storage, serving utensils, namely, spoons, forks, ladles, tongs and pie servers, cookware, namely, skillets, Dutch ovens, pots and pans and bakeware;
oven mitts |
| FINAL DESCRIPTION |
| Household containers for food storage, serving utensils, namely, spoons, forks, ladles, tongs and pie servers, cookware, namely,
skillets, Dutch ovens, pots and pans and bakeware; oven mitts |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (024)(current) |
| INTERNATIONAL CLASS |
024 |
| DESCRIPTION |
Kitchen towels and oven mitts |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| GOODS AND/OR SERVICES SECTION (024)(proposed) |
| INTERNATIONAL CLASS |
024 |
| TRACKED TEXT DESCRIPTION |
Kitchen towels and oven mitts; Kitchen towels |
| FINAL DESCRIPTION |
Kitchen towels |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2014 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2014 |
| ADDITIONAL STATEMENTS SECTION |
| DISCLAIMER |
No claim is made to the exclusive right to use "COOKS" and "HOME" apart from the mark as shown. |
| ATTORNEY SECTION (current) |
| NAME |
Stephanie Lewis-Bullitt |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| STREET |
6501 LEGACY DRIVE |
| CITY |
PLANO |
| STATE |
Texas |
| POSTAL CODE |
75024 |
| COUNTRY |
US |
| PHONE |
972-431-1000 |
| EMAIL |
TRADEMARKS-SM@JCP.COM |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| ATTORNEY SECTION (proposed) |
| NAME |
Stephanie Lewis-Bullitt |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| STREET |
6501 LEGACY DRIVE |
| CITY |
PLANO |
| STATE |
Texas |
| POSTAL CODE |
75024 |
| COUNTRY |
United States |
| PHONE |
972-431-1000 |
| EMAIL |
TRADEMARKS-SM@JCP.COM |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (current) |
| NAME |
STEPHANIE LEWIS-BULLITT |
| STREET |
6501 LEGACY DRIVE |
| CITY |
PLANO |
| STATE |
Texas |
| POSTAL CODE |
75024 |
| COUNTRY |
US |
| PHONE |
972-431-1000 |
| EMAIL |
TRADEMARKS-SM@JCP.COM |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Stephanie Lewis-Bullitt |
| STREET |
6501 LEGACY DRIVE |
| CITY |
PLANO |
| STATE |
Texas |
| POSTAL CODE |
75024 |
| COUNTRY |
United States |
| PHONE |
972-431-1000 |
| EMAIL |
TRADEMARKS-SM@JCP.COM |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/stephanie lewis-bullitt/ |
| SIGNATORY'S NAME |
Stephanie Lewis-Bullitt |
| SIGNATORY'S POSITION |
Attorney of record, Texas Bar member |
| SIGNATORY'S PHONE NUMBER |
972-431-1000 |
| DATE SIGNED |
02/12/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Feb 12 18:08:47 EST 2020 |
| TEAS STAMP |
USPTO/ROA-XX.XX.XX.XX-202
00212180847181455-8849951
4-700ee95a0a5df2b1415c88c
0cc2ad90cc29529dec3ee5786
10759d90479c626c-N/A-N/A-
20200212174047065781 |
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.
88499514 COOKS JCPENNEY HOME(Standard Characters, see http://uspto.report/TM/88499514/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 marks in U.S. Registration Nos. 4950068 and 4950072. 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 COOKS JCPENNEY HOME for goods in International Classes 8, 11, 21 and 24. The cited registered marks, owned by J. C. Penney Corporation,
Inc., are "JCPenney" 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 registrations.) 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 marks in U.S. Registration Nos.
4950068 and 4950072 be withdrawn.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Cutlery
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Cutlery;
Table cutlery, kitchen knivesClass 008 for Table cutlery, kitchen knives
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Small electrics, griddles, fryers, slow cookers, coffee and tea makers
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Small electrics, griddles, fryers, slow cookers, coffee and tea makers;
Small electric appliances,
namely, griddles, fryers, skillets, electric kettles, grills, toasters and toaster ovens, slow cookers, pressure cookers, waffle makers, coffee makers, rice cookers, roasters, chafing dishes, air
fryersClass 011 for Small electric appliances, namely, griddles, fryers, skillets, electric kettles, grills, toasters and toaster ovens, slow cookers, pressure cookers, waffle makers, coffee
makers, rice cookers, roasters, chafing dishes, air fryers
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Dishes, dinnerware, food storage, serving utensils, cookware and bakeware
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Dishes, dinnerware, food storage, serving utensils, cookware and bakeware;
Household containers
for food storage, serving utensils, namely, spoons, forks, ladles, tongs and pie servers, cookware, namely, skillets, Dutch ovens, pots and pans and bakeware;
oven mittsClass 021 for Household containers for food storage, serving utensils, namely, spoons, forks, ladles, tongs and pie servers, cookware, namely, skillets, Dutch ovens, pots and
pans and bakeware; oven mitts
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Kitchen towels and oven mitts
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Kitchen towels and oven mitts;
Kitchen towelsClass 024 for Kitchen towels
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 07/31/2014 and first used in commerce at least as early as 07/31/2014 , and
is now in use in such commerce.
The applicant's current attorney information: Stephanie Lewis-Bullitt. Stephanie Lewis-Bullitt, is located at
6501 LEGACY DRIVE
PLANO, Texas 75024
US
The phone number is 972-431-1000.
The email address is TRADEMARKS-SM@JCP.COM
The applicants 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 972-431-1000.
The email address is TRADEMARKS-SM@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.
The applicant's current correspondence information: STEPHANIE LEWIS-BULLITT. STEPHANIE LEWIS-BULLITT, is located at
6501 LEGACY DRIVE
PLANO, Texas 75024
US
The phone number is 972-431-1000.
The email address is TRADEMARKS-SM@JCP.COM
The applicants proposed correspondence 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
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "COOKS" and "HOME" apart from the mark as shown.
SIGNATURE(S)
Response Signature
Signature: /stephanie lewis-bullitt/ Date: 02/12/2020
Signatory's Name: Stephanie Lewis-Bullitt
Signatory's Position: Attorney of record, Texas Bar member
Signatory's Phone Number: 972-431-1000
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: 88499514
Internet Transmission Date: Wed Feb 12 18:08:47 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202002121808471814
55-88499514-700ee95a0a5df2b1415c88c0cc2a
d90cc29529dec3ee578610759d90479c626c-N/A
-N/A-20200212174047065781