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. 88705345 PILLOWTALKDERM(Standard Characters, see http://uspto.report/TM/88705345/mark.png) has been amended as follows:

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

Registration has been denied based on a prior registration for the mark PILLOW TALK for goods in Class 3, namely non-medicated skin care products for the face and body, namely, facial scrubs, exfoliating scrubs, body scrubs, lip scrubs, body mists, lip balms and body butters. Applicant disagrees with the Examine’s conclusion that the marks are nearly identical such that a consumer would believe that registrant’s goods and applicant’s services emanate from a common source. The Examiner claims that the suffix in applicant’s mark “derm” is merely descriptive of applicant’s goods (sic) in that “derm” means skin; the Examiner continues that “[t]his wording is merely descriptive of or generic for applicant’s goods because they consist of skin care products and cosmetic products for the skin”. In fact, the subject of the present application are blog services offered by a board certified dermatologist and while the Examiner argues that“derm” may be used to mean skin in the dictionary, it is also a shortened form of the words dermatology or dermatologist. Thus, instead of being less significant in terms of affecting the mark’s commercial impression, it is more significant in that is distinguishes and identifies the services as those emanating from a dermatologist.The rule in comparing marks for a likelihood of confusion analysis is to consider the entire presentation of the mark. PILLOW TALK and PILLOWTALKDERM are dissimilar. In addition, a consumer familiar with the scrubs, balms or butters offered by registration would not think that the blog services offered by a dermatologist emanate from the same source since the appearance of the cited mark as multiple words IS visually distinct from a unitary mark - if one presumes that registrant wished to expand the nature of its offerings from simple goods to include blog services, one would anticipate that the appearance of the marks would remain consistent so that consumers would relate one to the other. That is not the case here - a consumer would perceive goods bearing the mark PILLOW TALK as visually distinctive from services emanating from a website blog bearing the mark PILLOWTALKDERM. In fact, applicant has been using the mark in commerce for nearly a year with no incidence of actual confusion as to the source of the cited goods and applicant’s services. Based on the foregoing arguments, applicant disagrees with the Examiner’s conclusion that registration is barred by the cited mark based on likelihood of confusion between the marks and requests that said registration be removed as a bar.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for On-line journals, namely, blogs featuring information on skin care, skin protection, skin care products, general and cosmetic dermatology, and skin care education; Providing a website featuring blogs and non-downloadable publications in the nature of articles, videos and social media posts in the field(s) of skin care, skin protection, skin care products, general and cosmetic dermatology, and skin care education
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 09/22/2019 and first used in commerce at least as early as 09/22/2019 , and is now in use in such commerce.


Proposed:
Class 041 for On-line journals, namely, blogs featuring information on skin care, skin protection, skin care products, general and cosmetic dermatology, and skin care education; Providing a website featuring blogs and non-downloadable publications in the nature of articles, videos and social media posts in the field(s) of skin care, skin protection, skin care products, general and cosmetic dermatology, and skin care education
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 09/22/2019 and first used in commerce at least as early as 09/22/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041. The specimen(s) submitted consists of Various pages from applicant's website showing a sign-up box for blog mailings, reviews of favorite products, featured blog posts, video posts, and Instagram posts the are accessible from applicant home webpage..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-7222973147-202009040 95527905341_._pillowtalkd erm_subst_spe_20200904084 652.pdf
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Shyroh LLC, a limited liability company legally organized under the laws of New York, having an address of

            #35B      400 Park Ave. South
      New York, New York 10016
      United States

Proposed: Shyroh LLC, a limited liability company legally organized under the laws of New York, having an address of
      #35B
      400 Park Ave. South
      New York, New York 10016
      United States
      Email Address: XXXX
Correspondence Information (current):
      LISA A. PIERONI
      PRIMARY EMAIL FOR CORRESPONDENCE: lap@kirschsteinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Idriss.
Correspondence Information (proposed):
      Lisa A. Pieroni
      PRIMARY EMAIL FOR CORRESPONDENCE: lap@kirschsteinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Idriss.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Lisa A. Pieroni/      Date: 09/04/2020
Signatory's Name: Lisa A. Pieroni
Signatory's Position: Attorney of Record
Signatory's Phone Number: 212-697-3750


Response Signature
Signature: /Lisa A. Pieroni/     Date: 09/04/2020
Signatory's Name: Lisa A. Pieroni
Signatory's Position: Attorney of Record

Signatory's Phone Number: 212-697-3750

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 A. PIERONI
   KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, PC
   5TH FLOOR, SUITE 501
   425 FIFTH AVE.
   NEW YORK, New York 10016
Mailing Address:    Lisa A. Pieroni
   KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, PC
   5TH FLOOR, SUITE 501
   425 FIFTH AVE.
   NEW YORK, New York 10016
        
Serial Number: 88705345
Internet Transmission Date: Fri Sep 04 10:03:32 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020090410033242
6728-88705345-750547776da97e2ca1e7da56d3
10694445ebd46d18c66918bee3028c45eba56f5-
N/A-N/A-20200904095527905341