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. 88581323 COMFORTEMP(Standard Characters, see http://uspto.report/TM/88581323/mark.png) has been amended as follows:

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

This communication responds to the Office Action issued on September 30, 2019.  Reconsideration is respectfully requested in light of the amendments made herein and the following remarks.

 

The Examining Attorney has brought to Applicant’s attention prior pending Application Serial No. 87/801332 for the mark ComfortTemp as a potential bar to registration.  The prior pending application is directed to “portable electric heaters” in Class 11 and is owned by Helen of Troy Limited, an operating company that owns numerous consumer brands.  The ComfortTemp brand of portable electric heaters in particular is offered by Honeywell as a portable, ceramic tower heater for personal use.  Please see the attached printouts from the Helen of Troy and Honeywell websites for additional information.

 

The subject application for COMFORTEMP is directed to goods in Classes 17 and 25 that are not the same as, interchangeable with, or otherwise related to portable electric heaters.  However, it appears that the Examining Attorney may have been concerned that Applicant’s goods described as “acoustic and thermal insulation for use in the automotive, HVAC, appliance and commercial interior industries” could be related to the “portable electric heaters” identified in the prior pending application.  To allay the Examining Attorney’s concerns and further distinguish Applicant’s goods from those of the prior pending application, Applicant has amended its description of goods in Class 17 to add the limitation “none of the foregoing acoustic and thermal insulation for use in portable electric heaters.”

 

Based on the foregoing, Applicant believes there is no longer a potential likelihood of confusion with the prior pending application and respectfully requests that the subject application be approved for publication without suspension pending the disposition of the prior pending application.  The Examining Attorney is urged to contact the undersigned with any questions.     

EVIDENCE
Evidence in the nature of evidence in support of Response to Office Action has been attached.
Original PDF file:
evi_4013576142-20191028133422776908_._Evidence.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Padding materials of plastic; Synthetic padding and stuffing materials, namely, plastic waddings; Insulating polymeric fiber balls used for thermal insulation in the manufacture of clothing, footwear and headgear; Acoustic and thermal insulation for use in the automotive, HVAC, appliance and commercial interior industries
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: Padding materials of plastic; Synthetic padding and stuffing materials, namely, plastic waddings; Insulating polymeric fiber balls used for thermal insulation in the manufacture of clothing, footwear and headgear; Acoustic and thermal insulation for use in the automotive, HVAC, appliance and commercial interior industries; none of the foregoing acoustic and thermal insulation for use in portable electric heatersClass 017 for Padding materials of plastic; Synthetic padding and stuffing materials, namely, plastic waddings; Insulating polymeric fiber balls used for thermal insulation in the manufacture of clothing, footwear and headgear; Acoustic and thermal insulation for use in the automotive, HVAC, appliance and commercial interior industries; none of the foregoing acoustic and thermal insulation for use in portable electric heaters
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 025 for Clothing, outdoor jackets and pants, gloves, socks, hats, ear warmers, Ski and snow board helmets, race car helmets, ski and snow board boots, winter boots, hunting and hiking boots, pac boots, work boots, shoes, golf shoes, footwear, camping mats, hand warmers, blankets for animals and humans, pet beds and bedding, waders, body armor, sleeping bags and liners, pillows, mattress pads, mattress ticking, inner soles and outer soles for footwear, insertable foot pads and insoles, all with padding or wadding
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: Clothing, outdoor jackets and pants, gloves, socks, hats, ear warmers, Ski and snow board helmets, race car helmets, ski and snow board boots, winter boots, hunting and hiking boots, pac boots, work boots, shoes, golf shoes, footwear, camping mats, hand warmers, blankets for animals and humans, pet beds and bedding, waders, body armor, sleeping bags and liners, pillows, mattress pads, mattress ticking, inner soles and outer soles for footwear, insertable foot pads and insoles, all with padding or wadding; Clothing, namely, outdoor jackets and pants, gloves, socks, hats, ear warmers, ski and snow board boots, winter boots, hunting and hiking boots, pac boots, work boots, shoes, golf shoes, footwear, hand warmers, fishing waders, and insertable insoles for footwearClass 025 for Clothing, namely, outdoor jackets and pants, gloves, socks, hats, ear warmers, ski and snow board boots, winter boots, hunting and hiking boots, pac boots, work boots, shoes, golf shoes, footwear, hand warmers, fishing waders, and insertable insoles for footwear
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.

SIGNATURE(S)
Response Signature
Signature: /jss/     Date: 10/28/2019
Signatory's Name: Jessica S. Sachs
Signatory's Position: Attorney for Applicant; Attorney with Harness, Dickey & Pierce, P.L.C.

Signatory's Phone Number: 248-641-1292

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: 88581323
Internet Transmission Date: Mon Oct 28 13:43:20 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019102813432023
9011-88581323-7002b8d4553b39ed490434ada8
89249a53bf47d06bf193fefc45507347ab53af96
-N/A-N/A-20191028133422776908