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. 88520945 ASK TEAM CLEAN (Stylized and/or with Design, see http://uspto.report/TM/88520945/mark.png) has been amended as follows:

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

Actual argument is attached within the evidence section.

EVIDENCE
Evidence in the nature of actual argument has been attached.
Original PDF file:
evi_1-1652253822-20190909142215970701_._ASK_TEAM_CLEAN___Design_Response.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; Impregnated treated synthetic cellulose non-woven aperture sheets used in washing; preparations for cleaning metal, wood, stone, porcelain, glass, synthetics and textiles; rinsing agents for laundry and tableware; soaps not for personal use; Laundry preparations for attracting dyes; Color-removing preparations for laundry purposes; Laundry starch; Cloths impregnated with a detergent for cleaning
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: Bleaching preparations and other substances for laundry use; Bleaching and washing preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; Impregnated treated synthetic cellulose non-woven aperture sheets used in washing; Impregnated treated synthetic cellulose non-woven aperture sheets used in washing, namely, dryer sheets; preparations for cleaning metal, wood, stone, porcelain, glass, synthetics and textiles; rinsing agents for laundry and tableware; soaps not for personal use; soaps not for personal use, namely, non-medicated soap; Laundry preparations for attracting dyes; Laundry preparations for attracting dyes, namely, laundry bleach; Color-removing preparations for laundry purposes; Color-removing preparations for laundry purposes, namely, laundry bleach; Laundry starch; Cloths impregnated with a detergent for cleaningClass 003 for Bleaching and washing preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; Impregnated treated synthetic cellulose non-woven aperture sheets used in washing, namely, dryer sheets; preparations for cleaning metal, wood, stone, porcelain, glass, synthetics and textiles; rinsing agents for laundry and tableware; soaps not for personal use, namely, non-medicated soap; Laundry preparations for attracting dyes, namely, laundry bleach; Color-removing preparations for laundry purposes, namely, laundry bleach; Laundry starch; Cloths impregnated with a detergent for cleaning
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for advertising publications; advertising on printed materials; advertising in periodicals
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: advertising publications; Printed publications namely, brochures and informational booklets in the field of household cleaning; advertising on printed materials; advertising in periodicalsClass 016 for Printed publications namely, brochures and informational booklets in the field of household cleaning
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Online community management services; Providing marketing information via websites; advertising; digital advertising; providing business information in the field of social media; providing marketing consulting in the field of social media; advertising and marketing services provided by means of social media
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: Online community management services; Providing marketing information via websites; advertising services; advertising; digital advertising services; digital advertising; providing business information in the field of social media; providing marketing consulting in the field of social media; advertising and marketing services provided by means of social media; Distribution of advertising materials in the nature of printed materialsClass 035 for Providing marketing information via websites; advertising services; digital advertising services; providing business information in the field of social media; providing marketing consulting in the field of social media; advertising and marketing services provided by means of social media; Distribution of advertising materials in the nature of printed materials
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for wireless digital messaging services; digital network telecommunications services; digital communication services; Internet communication, communication services, mobile communication, electronic transmission of messages, electronic transmission of information, electronic transmission of knowledge, transmission of knowledge concerning cleaning, communication concerning exchange of experiences; chat room services for social networking; communication networks
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: Wireless digital messaging services; digital network telecommunications services; digital communication services; communication via digital transmission electronic transmission of messages, electronic transmission of knowledge, transmission of knowledge concerning cleaning, communication concerning exchange of experiences; Internet communication, communication services, mobile communication, electronic transmission of messages, electronic transmission of information, electronic transmission of knowledge, transmission of knowledge concerning cleaning, communication concerning exchange of experiences; Communication services, namely, transmission of voice, audio, visual images and data and information about household cleaning by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; chat room services for social networking; communication networksClass 038 for Wireless digital messaging services; digital network telecommunications services; communication via digital transmission electronic transmission of messages, electronic transmission of knowledge, transmission of knowledge concerning cleaning, communication concerning exchange of experiences; Communication services, namely, transmission of voice, audio, visual images and data and information about household cleaning by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; chat room services for social networking
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, providing of education and training; providing games; providing online computer games; electronic games services
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: Entertainment services, namely, providing of education and training; Entertainment and educational services, namely, providing classes, workshops, seminars, and training in the field of household cleaning; providing games; providing online video games; providing online computer games; electronic games services; electronic games services provided by means of the Internet; publication of printed matterClass 041 for Entertainment and educational services, namely, providing classes, workshops, seminars, and training in the field of household cleaning; providing online video games; providing online computer games; electronic games services provided by means of the Internet; publication of printed matter
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.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Henkel AG & Co. KGaA having an address of
      Henkelstrasse 67
      Düsseldorf, D-40589
      Germany

Proposed: Henkel AG & Co. KGaA, Limited Partnership with Shares legally organized under the laws of Germany, having an address of
      Henkelstrasse 67
      Düsseldorf, D-40589
      Germany

The applicant's current attorney information: Lauren J. Mandell. Lauren J. Mandell of HENKEL CORPORATION, is located at

      200 ELM STREET
      STAMFORD, Connecticut 06902-3800
      US
The docket/reference number is L-ASK TEAM C.

The phone number is 475-299-8631.

The email address is trademarks@henkel.com

The applicants proposed attorney information: Lauren J. Mandell. Lauren J. Mandell of HENKEL CORPORATION, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      200 ELM STREET
      STAMFORD, Connecticut 06902-3800
      United States
The docket/reference number is L-ASK TEAM C.

The phone number is 475-299-8631.

The email address is trademarks@henkel.com

Lauren J. Mandell 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: LAUREN J. MANDELL. LAUREN J. MANDELL of HENKEL CORPORATION, is located at

      200 ELM STREET
      STAMFORD, Connecticut 06902-3800
      US
The docket/reference number is L-ASK TEAM C.

The phone number is 475-299-8631.

The email address is trademarks@henkel.com

The applicants proposed correspondence information: Lauren J. Mandell. Lauren J. Mandell of HENKEL CORPORATION, is located at

      200 ELM STREET
      STAMFORD, Connecticut 06902-3800
      United States
The docket/reference number is L-ASK TEAM C.

The phone number is 475-299-8631.

The email address is trademarks@henkel.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "ASK TEAM CLEAN" with the word "ASK" in blue and the words "TEAM CLEAN" in white with the word "CLEAN" slightly bolded. Alongside the wording are two human figures depicted with brown hair, white shirts, and white shoes, each having on a pair of gloves, one pair in yellow and one pair in light blue. The boy figure is wearing blue overalls and the girl figure is wearing a blue dress and has a pink bow in her hair. The girl figure's arms and legs are peach. The faces of both figures are peach. The entire mark appears on an overall rectangular background in the color pink.

SIGNATURE(S)
Response Signature
Signature: /lauren mandell/     Date: 09/09/2019
Signatory's Name: Lauren J. Mandell
Signatory's Position: In-House Trademark Counsel

Signatory's Phone Number: 4752998631

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:    LAUREN J. MANDELL
   HENKEL CORPORATION
   
   200 ELM STREET
   STAMFORD, Connecticut 06902-3800
Mailing Address:    Lauren J. Mandell
   HENKEL CORPORATION
   200 ELM STREET
   STAMFORD, Connecticut 06902-3800
        
Serial Number: 88520945
Internet Transmission Date: Mon Sep 09 15:37:48 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019090915374868
7101-88520945-610f0de1d3f988ea7e1070e452
f354331febfc5d6701e26a50c9ee16ebf0baa3-N
/A-N/A-20190909142215970701