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. 88550932 TAKE THE PLUNGE(Standard Characters, see http://uspto.report/TM/88550932/mark.png) has been amended as follows:

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

The Examiner issued a potential refusal on likelihood of confusion grounds due to a prior-pending application. Specifically, the Examiner cited Application No. 87362377 for PLUNGE, owned by CKL Holdings N.V. (Belgium) and covering in relevant part "perfumery; essential oils for personal use; cosmetics and make-up; eye make-up; eyeliners; blushers; lipsticks; hair lotions; non-medicated soaps for hands, face and body" in Class 3 (the "Cited Application"). The Cited Application is the subject of an active opposition proceeding, Opposition No. 91249275, that was initiated by a third party, and thus prosecution of the Cited Application is currently suspended. In view of the foregoing, Applicant respectfully requests that prosecution of the subject application is suspended until the opposition against the Cited Application is resolved and the Cited Application either matures to registration or is abandoned.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonic, hair creams, preparations for the bath and/or shower; non-medicated toilet preparations; skin care preparations; cosmetics
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: Soaps; Non-medicated soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products; hair care preparations; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonic, hair creams, preparations for the bath and/or shower; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, hair conditioners, hair sprays, hair-washing powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturizers, non-medicated hair liquid in the nature of hair styling preparations and/or liquid moisturizing treatments for hair, non-medicated hair preservation treatments; non-medicated toilet preparations; non-medicated hair desiccating treatments, namely, hair oils, hair tonic, hair creams; skin care preparations; non-medicated bath and shower preparations; non-medicated toiletry preparations; non-medicated skin care preparations; cosmeticsClass 003 for Non-medicated soaps; perfumery; essential oils; deodorants and antiperspirants; hair care preparations; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, hair conditioners, hair sprays, hair-washing powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturizers, non-medicated hair liquid in the nature of hair styling preparations and/or liquid moisturizing treatments for hair, non-medicated hair preservation treatments; non-medicated hair desiccating treatments, namely, hair oils, hair tonic, hair creams; non-medicated bath and shower preparations; non-medicated toiletry preparations; non-medicated skin care preparations; cosmetics
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.

The applicant's current attorney information: Lisa W. Rosaya. Lisa W. Rosaya of BAKER & MCKENZIE LLP, is located at

      452 FIFTH AVENUE
      NEW YORK, New York 10018
      US

The phone number is 212-626-4557.

The fax number is 212 310 1659.

The email address is nyctrademarks@bakermckenzie.com

The applicants proposed attorney information: Lisa W. Rosaya. Other appointed attorneys are Pamela T. Church, Lindsey E. Utrata, Joshua S. Wolkoff, Alysha C. Preston, Gia M. Wakil, and all other attorneys with the firm. Lisa W. Rosaya of BAKER & MCKENZIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      452 FIFTH AVENUE
      NEW YORK, New York 10018
      United States
The docket/reference number is IPUN089YF.

The phone number is 212-626-4557.

The fax number is 212 310 1659.

The email address is nyctrademarks@bakermckenzie.com

Lisa W. Rosaya 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: LISA W. ROSAYA. LISA W. ROSAYA of BAKER & MCKENZIE LLP, is located at

      452 FIFTH AVENUE
      NEW YORK, New York 10018
      US

The phone number is 212-626-4557.

The fax number is 212 310 1659.

The email address is nyctrademarks@bakermckenzie.com; lindsey.utrata@bakermckenzie.com

The applicants proposed correspondence information: Lisa W. Rosaya. Lisa W. Rosaya of BAKER & MCKENZIE LLP, is located at

      452 FIFTH AVENUE
      NEW YORK, New York 10018
      United States
The docket/reference number is IPUN089YF.

The phone number is 212-626-4557.

The fax number is 212 310 1659.

The email address is nyctrademarks@bakermckenzie.com; lindsey.utrata@bakermckenzie.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examining Attorney requested additional product information about the covered goods. However, because the subject application was filed on an intent-to-use basis and Applicant is still in the process of developing the product(s), Applicant is unable to provide additional product information at this time.


SIGNATURE(S)
Response Signature
Signature: /Lindsey E. Utrata/     Date: 12/03/2019
Signatory's Name: Lindsey E. Utrata
Signatory's Position: Attorney of Record, Authorized Attorney, NY Bar Member

Signatory's Phone Number: 212.626.4242

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:    LISA W. ROSAYA
   BAKER & MCKENZIE LLP
   
   452 FIFTH AVENUE
   NEW YORK, New York 10018
Mailing Address:    Lisa W. Rosaya
   BAKER & MCKENZIE LLP
   452 FIFTH AVENUE
   NEW YORK, New York 10018
        
Serial Number: 88550932
Internet Transmission Date: Tue Dec 03 20:41:45 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191203204145
584561-88550932-700b9201b499e19bcdb40662
1de1533345982c51e78b8b2a3716ff7ee2d28e-N
/A-N/A-20191202143242231530