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. 88615884 PIRELLI (Stylized and/or with Design, see http://uspto.report/TM/88615884/mark.png) has been amended as follows:

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

In response to the surname refusal issued pursuant to Trademark Act Section 2(e)(4), Applicant requests that registration be granted on grounds of acquired distinctiveness pursuant to Trademark Act Section 2(f).  Applicant's claim of acquired distinctiveness is based on Applicant's ownership of active U.S. Registration No. 4445904 on the Principal Register for the same mark for sufficiently similar goods.  Applicant requests that the surname refusal therefore be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Sheets and blocks of foamed latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas; synthetic foam for mattresses and pillows; synthetic materials for mattresses, pillows, and quilts; rubber; gutta-percha; gum
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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: Sheets and blocks of foamed latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas; Sheets and blocks of foamed synthetic latex for use in the manufacture of mattresses; synthetic foam for mattresses and pillows; synthetic polyethylene foam for use in the manufacture of mattresses and pillows; synthetic materials for mattresses, pillows, and quilts; synthetic materials in the nature of polyethylene foam for use in the manufacture of mattresses, pillows, and quilts; rubber; rubber sheets; foam rubber; gum; stuffing of rubber; gutta-percha; raw or semi-worked gumClass 017 for Sheets and blocks of foamed synthetic latex for use in the manufacture of mattresses; synthetic polyethylene foam for use in the manufacture of mattresses and pillows; synthetic materials in the nature of polyethylene foam for use in the manufacture of mattresses, pillows, and quilts; rubber sheets; foam rubber; stuffing of rubber; gutta-percha; raw or semi-worked gum
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Beds; box springs; mattresses; pillows, cushions; bedsprings as part of a box spring or mattress
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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: Beds; box springs; mattresses; pillows, cushions; pillows, cushions in the nature of pillows; bedsprings as part of a box spring or mattressClass 020 for Beds; box springs; mattresses; pillows, cushions in the nature of pillows; bedsprings as part of a box spring or mattress
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Bed linens; bed pads; bed sheets; bed spreads; mattress covers; mattress pads; pillow cases; quilts
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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: Bed linens; bed pads; bed sheets; bed spreads; mattress covers; pillow cases; mattress pads; quiltsClass 024 for Bed linens; bed sheets; bed spreads; mattress covers; pillow cases; quilts
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Italy registration number 578557 registered 10/16/1992 with a renewal date of 10/09/2012 and an expiration date of 10/16/2022 ], 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
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4445904


SIGNATURE(S)
Response Signature
Signature: /StevenBPowell/     Date: 01/10/2020
Signatory's Name: Steven B. Powell
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 202-344-4536

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: 88615884
Internet Transmission Date: Fri Jan 10 14:24:21 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202001101424213
69423-88615884-700206692fe70e7b8b1bf2ccd
f2b42b4fae238be3356816d202810b75479d7e47
a-N/A-N/A-20200110135809386613