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. 88724055 DANSKIN(Standard Characters, see http://uspto.report/TM/88724055/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Massage apparatus, namely, massage bars, massage rollers, massage balls, foam massage rollers, foam rollers for muscle therapy, foot massage apparatus, foot massage rollers, foam foot rollers, pinpoint and multi-point massage rollers, multi-point muscle rollers, back massagers, back massage rollers, and massage apparatus used for point concentrated therapy, hot/cold therapy, gel pack, and post workout recovery
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: Massage apparatus, namely, massage bars, massage rollers, massage balls, foam massage rollers, foam rollers for muscle therapy, foot massage apparatus, foot massage rollers, foam foot rollers, pinpoint and multi-point massage rollers, multi-point muscle rollers, back massagers, back massage rollers, and massage apparatus used for point concentrated therapy, hot/cold therapy, gel pack, and post workout recovery; Massage apparatus, namely, massage bars, massage rollers, massage balls, foam massage rollers, foam rollers for muscle therapy, foot massage apparatus, foot massage rollers, foam foot rollers, pinpoint and multi-point massage rollers, multi-point muscle rollers, back massagers, back massage rollers, and massage apparatus used for point concentrated therapy, hot/cold therapy wraps, and chemically activated gel pack for medical purposesClass 010 for Massage apparatus, namely, massage bars, massage rollers, massage balls, foam massage rollers, foam rollers for muscle therapy, foot massage apparatus, foot massage rollers, foam foot rollers, pinpoint and multi-point massage rollers, multi-point muscle rollers, back massagers, back massage rollers, and massage apparatus used for point concentrated therapy, hot/cold therapy wraps, and chemically activated gel pack for medical purposes
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:

Current:
Class 028 for Physical fitness and exercise equipment, namely, exercise bars, barbells, dumbbell bars, dumbbells, kettle bells, exercise free weights, wrist weights, ankle weights, leg weights, weighted balls, stretch cords for bands used for physical fitness purposes, jump ropes, exercise benches, abdominal exercise boards, chest expanders, door knob rope exercisers, hand grips, balance boards, weighted exercise balls, stability balls, medicine balls, inflatable balls, punching bags, weight lifting belts, workout and lifting gloves, ankle support straps, wrist support straps, elbow supports, knee supports, power lifting straps to provide stability during exercise, athletic wraps for supporting arms, hands, wrists and arches during exercise, hip and thigh exercise belts, abdominal wheel exercise rollers, barbell pads, rowing machines, exercise devices for toning thighs, twist boards, exercise devices for shaping waists, agility exercise ladders, exercise steppers, trampoline, exercise mats, yoga mats, yoga pads, yoga bricks, yoga straps, yoga wheel, yoga towels, yoga gloves, expansion cables, bands, and straps, and equipment used for Pilates exercise; Pilates rings, hoops for gymnastics, stretch bands, resistance bands, resistance cables, resistance ropes, resistance tubes, exercise loops
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: Physical fitness and exercise equipment, namely, exercise bars, barbells, dumbbell bars, dumbbells, kettle bells, exercise free weights, wrist weights, ankle weights, leg weights, weighted balls, stretch cords for bands used for physical fitness purposes, jump ropes, exercise benches, abdominal exercise boards, chest expanders, door knob rope exercisers, hand grips, balance boards, weighted exercise balls, stability balls, medicine balls, inflatable balls, punching bags, weight lifting belts, workout and lifting gloves, ankle support straps, wrist support straps, elbow supports, knee supports, power lifting straps to provide stability during exercise, athletic wraps for supporting arms, hands, wrists and arches during exercise, hip and thigh exercise belts, abdominal wheel exercise rollers, barbell pads, rowing machines, exercise devices for toning thighs, twist boards, exercise devices for shaping waists, agility exercise ladders, exercise steppers, trampoline, exercise mats, yoga mats, yoga pads, yoga bricks, yoga straps, yoga wheel, yoga towels, yoga gloves, expansion cables, bands, and straps, and equipment used for Pilates exercise; Physical fitness and exercise equipment, namely, exercise bars, barbells, dumbbell bars, dumbbells, kettle bells, exercise free weights, wrist weights, ankle weights, leg weights, weighted balls, stretch cords for bands used for physical fitness purposes, jump ropes, exercise benches, abdominal exercise boards, chest expanders, door knob rope exercisers, hand grips, balance boards, weighted exercise balls, stability balls, medicine balls, inflatable balls, punching bags, weight lifting belts, workout and lifting gloves, ankle support straps, wrist support straps, elbow supports, knee supports, power lifting straps to provide stability during exercise, athletic wraps for supporting arms, hands, wrists and arches during exercise, hip and thigh exercise belts, abdominal wheel exercise rollers, barbell pads, rowing machines, exercise devices for toning thighs, exercise devices in the nature of twist boards, exercise devices for shaping waists, agility exercise ladders, exercise steppers, trampoline, exercise mats, yoga mats, yoga pads, yoga bricks, yoga straps, yoga wheel, yoga towels, yoga gloves, expansion cables, bands, and straps, and equipment used for pilates exercise in the nature of pilates toning balls; Pilates rings, hoops for gymnastics, stretch bands, resistance bands, resistance cables, resistance ropes, resistance tubes, exercise loops; physical fitness and exercise equipment, namely, Pilates rings, hoops for gymnastics, stretch bands, resistance bands, resistance cables, resistance ropes, resistance tubes, exercise loopsClass 028 for Physical fitness and exercise equipment, namely, exercise bars, barbells, dumbbell bars, dumbbells, kettle bells, exercise free weights, wrist weights, ankle weights, leg weights, weighted balls, stretch cords for bands used for physical fitness purposes, jump ropes, exercise benches, abdominal exercise boards, chest expanders, door knob rope exercisers, hand grips, balance boards, weighted exercise balls, stability balls, medicine balls, inflatable balls, punching bags, weight lifting belts, workout and lifting gloves, ankle support straps, wrist support straps, elbow supports, knee supports, power lifting straps to provide stability during exercise, athletic wraps for supporting arms, hands, wrists and arches during exercise, hip and thigh exercise belts, abdominal wheel exercise rollers, barbell pads, rowing machines, exercise devices for toning thighs, exercise devices in the nature of twist boards, exercise devices for shaping waists, agility exercise ladders, exercise steppers, trampoline, exercise mats, yoga mats, yoga pads, yoga bricks, yoga straps, yoga wheel, yoga towels, yoga gloves, expansion cables, bands, and straps, and equipment used for pilates exercise in the nature of pilates toning balls; physical fitness and exercise equipment, namely, Pilates rings, hoops for gymnastics, stretch bands, resistance bands, resistance cables, resistance ropes, resistance tubes, exercise loops
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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
The wording DANSKIN appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


The owner's/holder's proposed attorney information: Linda Dooley. Linda Dooley of Iconix Brand Group, Inc., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1450 Broadway, 3rd Floor
      New York, New York 10018
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The email address is ldooley@iconixbrand.com

Linda Dooley submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      IP DEPARTMENT
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@iconixbrand.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Linda Dooley
      PRIMARY EMAIL FOR CORRESPONDENCE: ldooley@iconixbrand.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademarks@iconixbrand.com

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)
Response Signature
Signature: /l.dooley/     Date: 09/17/2020
Signatory's Name: Linda Dooley
Signatory's Position: Attorney of Record, NY Bar Member (2656767)

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:    IP DEPARTMENT
   ICONIX BRAND GROUP, INC.
   
   1450 BROADWAY, 3RD FLOOR
   NEW YORK, New York 10018
Mailing Address:    Linda Dooley
   Iconix Brand Group, Inc.
   1450 Broadway, 3rd Floor
   New York, New York 10018
        
Serial Number: 88724055
Internet Transmission Date: Thu Sep 17 00:34:39 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202009170034398
32280-88724055-750a3b05afff1703d10aeaad4
b2435aa480301426ee10d5589aeb949a76a62a7c
-N/A-N/A-20200917002541848854