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. 88550964 KERATIN SMOOTH(Standard Characters, see http://uspto.report/TM/88550964/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. 86496458 for KERATIN SMOOTH, owned by Alberto-Culver International, Inc., covering goods in Classes 8, 11, 21, and 26 (the "Cited Application"). Applicant respectfully requests that prosecution of the instant application is suspended until 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 Shampoo, hair conditioner, hair care preparations, non-medicated hair treatment preparations for cosmetic purposes, and hair styling preparations
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 00/00/2013 and first used in commerce at least as early as 00/00/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Shampoo, hair conditioner, hair care preparations, non-medicated hair treatment preparations for cosmetic purposes, and hair styling preparations; Hair care products containing keratin, namely, shampoo, hair conditioner, hair care preparations, non-medicated hair treatment preparations for cosmetic purposes, and hair styling preparationsClass 003 for Hair care products containing keratin, namely, shampoo, hair conditioner, hair care preparations, non-medicated hair treatment preparations for cosmetic purposes, and hair styling preparations
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 00/00/2013 and first used in commerce at least as early as 00/00/2013 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "KERATIN" apart from the mark as shown.


Miscellaneous Statement
The Examining Attorney inquired whether the wording "KERATIN" in the applied-for mark has any particular meaning in the personal care industry and requested additional information about the products. Applicant hereby confirms that "KERATIN" refers to an ingredient in the covered goods. Accordingly, Applicant has agreed to disclaim "KERATIN" and modify the goods specification to state that the goods contain keratin. Additionally, although the application was filed on an intent-to-use basis, Applicant recently provided evidence of use in the form of an Amendment to Allege Use, which was accepted by the USPTO on September 24, 2019. Since Applicant has agreed to the disclaimer request, modified the goods specification to state that the goods contain keratin, and provided evidence of use, Applicant respectfully asserts that the request for additional information is rendered moot.


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.

        
Serial Number: 88550964
Internet Transmission Date: Tue Dec 03 20:30:40 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191203203040
173528-88550964-700a171373f89358f8236347
c4b72113c8b21255f4373de9f346dffd84c8d0aa
-N/A-N/A-20191203192624074025