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. 88585673 ALFRED SUNG HOME(Standard Characters, see http://uspto.report/TM/88585673/mark.png) has been amended as follows:

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

Applicant is responding to the Non-Final Office Action issued on November 20, 2019 in connection with the subject application.  In the Office Action, the Examiner stated that particular wording in the U.S. application’s identification of goods, namely “bath linens; household linens,” has been found to exceed the scope of goods in the foreign registration relied upon for the Section 44(e) basis.  These two items exceed the scope of goods in the foreign registration because the entries for “bath linens” and “household linens” are broader than the specific items listed in the identification of the foreign registration.

 

In response, Applicant requests that the identification of goods in the U.S. application be narrowed with regard to these two items.  Specifically, Applicant requests that “bath linens” be amended to read “bath linens, namely, bath mats, towels and face cloths”.  “Bath mats” and “towels” are items covered by the foreign registration, and “face cloths” and “towels” are already listed in the U.S. application.  Also, “face cloths” are a subset of “Towels.”  Applicant respectfully submits that all of these items fall under the general heading of “bath linens”, and the amendment to the identification of goods in the U.S. application would only be narrowing the description to include specific goods already covered by the foreign registration.

 

Similarly, Applicant requests that “household linens” be amended to read “household linens, namely, bedding, namely, pillow cases, bed linen and bed sheets”.  “Bedding” is covered by the foreign registration, and although some of these items are already listed in the U.S. application under “bedding”, Applicant suggests moving these specific items from this heading to fall under the category “household linens, namely, bedding” if acceptable.  If these changes are not acceptable, Applicant requests that the goods remain as originally listed.

 

The Examiner also raised another issue with regard to the identification of goods.  The Examiner indicated that the wording “blankets” appearing near the end of the identification of goods must be clarified because the wording is indefinite/too broad or misclassified.  In response, Applicant wishes to amend this wording to “bed blankets” as suggested by the Examiner.  Since “bed blankets” also appears under the previous listing for “bedding”, Applicant will delete the first listing for these goods so they are not duplicated in the identification.  The proposed amended description of goods is shown below.

 

Lastly, the Examiner stated that Applicant must provide a disclaimer of the unregistrable part of the applied-for mark, even though the mark as a whole appears to be registrable.  In this case, Applicant must disclaim the wording “HOME” in the mark because it is not inherently distinctive.  In response, Applicant is submitting a disclaimer in the following format: No claim is made to the exclusive right to use “HOME” apart from the mark as shown.

 

Applicant respectfully submits that it has responded to all of the issues raised by the Examiner.  Applicant requests that the Examiner please advise Applicant, through its attorney of record, if he does not agree with Applicant’s proposed amendments to the identification of goods or if there are any further inquiries or remaining issues.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Towels; beach towels; pool towels; face cloths; shower curtains; shower curtain liners; bedding, namely, pillow cases, bed blankets, bed canopies, bed clothes, bed covers, mattress covers, bed linen, bed pads, mattress pads, bed sheets, bed skirts, bed spreads, shams, comforters, quilts, duvets, duvet covers; throws; blankets; draperies; window curtains; bathroom window curtains; bath linens; household linens; table linens
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA742606 registered 06/25/2009 with a renewal date of __________ and an expiration date of 06/25/2024 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Towels; beach towels; pool towels; face cloths; shower curtains; shower curtain liners; bedding, namely, bed canopies, bed clothes, bed covers, mattress covers, bed pads, mattress pads, bed skirts, bed spreads, shams, comforters, quilts, duvets, duvet covers; bedding, namely, pillow cases, bed blankets, bed canopies, bed clothes, bed covers, mattress covers, bed linen, bed pads, mattress pads, bed sheets, bed skirts, bed spreads, shams, comforters, quilts, duvets, duvet covers; throws; bed blankets; blankets; draperies; window curtains; bathroom window curtains; bath linens, namely, bath mats, towels and face cloths; bath linens; household linens, namely, bedding, namely, pillow cases, bed linen and bed sheets; household linens; table linensClass 024 for Towels; beach towels; pool towels; shower curtains; shower curtain liners; bedding, namely, bed canopies, bed clothes, bed covers, mattress covers, bed pads, mattress pads, bed skirts, bed spreads, shams, comforters, quilts, duvets, duvet covers; throws; bed blankets; draperies; window curtains; bathroom window curtains; bath linens, namely, bath mats, towels and face cloths; household linens, namely, bedding, namely, pillow cases, bed linen and bed sheets; table linens
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA742606 registered 06/25/2009 with a renewal date of __________ and an expiration date of 06/25/2024 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "HOME" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Mark J. Liss/     Date: 12/03/2019
Signatory's Name: Mark J. Liss
Signatory's Position: Attorney of Record, IL Bar Member

Signatory's Phone Number: 312-616-5600

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: 88585673
Internet Transmission Date: Tue Dec 03 15:34:46 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019120315344694
9847-88585673-7009f3c6eccf4cbdfac569c363
d6e37744819dd2d6b7099643b26c580e7c3711b8
-N/A-N/A-20191203152212674662