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. 88810653 SALONPAS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8881065 3/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Medical apparatus and instruments for transdermal drug administration system, namely, micro needles assembled on an adhesive patch sold without medication; heating pads for medical purposes; gel-type cooling pads or patches for absorbing and radiating sudden heat in the human body for medical purposes; thermotherapy apparatus for medical purposes; heating and cooling packs filled with chemical substances that react when required to warm or cool the body for medical purposes; covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body; heating and cooling packs administered chemical substances that react when required to warm or cool the body for medical purposes; adhesive sheets for medical purposes used to apply heating and cooling packs administered chemical substances that react when required to warm or cool the body; ice bags for medical purposes; ice bag pillows for medical purposes; supportive bandages; kinesiology tapes
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 [ Japan registration number 5643435 registered 01/17/2014 with a renewal date of __________ and an expiration date of 01/17/2024 ], 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: Medical apparatus and instruments for transdermal drug administration system, namely, micro needles assembled on an adhesive patch sold without medication; heating pads for medical purposes; gel-type cooling pads or patches for absorbing and radiating sudden heat in the human body for medical purposes; gel-type cooling pads and patches for absorbing and radiating sudden heat in the human body for medical purposes; thermotherapy apparatus for medical purposes; heating and cooling packs filled with chemical substances that react when required to warm or cool the body for medical purposes; covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body; fitted covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body; heating and cooling packs administered chemical substances that react when required to warm or cool the body for medical purposes; chemically activated heating and cooling packs that react when required to warm or cool the body for medical purposes; adhesive sheets for medical purposes used to apply heating and cooling packs administered chemical substances that react when required to warm or cool the body; non-medicated adhesive paper sheets for medical purposes used to apply chemically activated heating and cooling packs that react when required to warm or cool the body; ice bags for medical purposes; ice bag pillows for medical purposes; supportive bandages; kinesiology tapesClass 010 for Medical apparatus and instruments for transdermal drug administration system, namely, micro needles assembled on an adhesive patch sold without medication; heating pads for medical purposes; gel-type cooling pads and patches for absorbing and radiating sudden heat in the human body for medical purposes; thermotherapy apparatus for medical purposes; heating and cooling packs filled with chemical substances that react when required to warm or cool the body for medical purposes; fitted covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body; chemically activated heating and cooling packs that react when required to warm or cool the body for medical purposes; non-medicated adhesive paper sheets for medical purposes used to apply chemically activated heating and cooling packs that react when required to warm or cool the body; ice bags for medical purposes; ice bag pillows for medical purposes; supportive bandages; kinesiology tapes
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 [ Japan registration number 5643435 registered 01/17/2014 with a renewal date of __________ and an expiration date of 01/17/2024 ], 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.
Original PDF file:
FRU0-6323611269-171659077 _._Certificate_JPN_Reg._5 643435.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

Applicant proposes to amend the following:

Current:
Class 028 for Toy noisemaker; inflatable balloon cheering sticks; thunder sticks; dolls; toy figures; playing cards; play balls and play balloons; game apparatus, namely, paddles, rackets, bats, nets, bladders, balls and protectors for playing indoor and outdoor games; golf clubs; golf bags; golf gloves; athletic tape; knee guards, elbow guards, and wrist guards for athletic use; protective paddings for playing sports; athletic supporters
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 [ Japan registration number 5928416 registered 03/03/2017 with a renewal date of __________ and an expiration date of 03/03/2027 ], 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: Toy noisemaker; inflatable balloon cheering sticks; thunder sticks; toy noisemakers, namely, thunder sticks; dolls; toy figures; playing cards; play balls and play balloons; game apparatus, namely, paddles, rackets, bats, nets, bladders, balls and protectors for playing indoor and outdoor games; game apparatus, namely, table tennis paddles, rackets, bats, nets for sports, bladders of balls, balls and abdomen protectors for athletic use, all of the foregoing for playing indoor and outdoor games; golf clubs; golf bags; golf gloves; athletic tape; athletic adhesive tape for hockey stick and uniform support; knee guards, elbow guards, and wrist guards for athletic use; protective paddings for playing sports; protective paddings for playing football and baseball; athletic supportersClass 028 for Toy noisemaker; inflatable balloon cheering sticks; toy noisemakers, namely, thunder sticks; dolls; toy figures; playing cards; play balls and play balloons; game apparatus, namely, table tennis paddles, rackets, bats, nets for sports, bladders of balls, balls and abdomen protectors for athletic use, all of the foregoing for playing indoor and outdoor games; golf clubs; golf bags; golf gloves; athletic adhesive tape for hockey stick and uniform support; knee guards, elbow guards, and wrist guards for athletic use; protective paddings for playing football and baseball; athletic supporters
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 [ Japan registration number 5928416 registered 03/03/2017 with a renewal date of __________ and an expiration date of 03/03/2027 ], 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.
Original PDF file:
FRU1-6323611269-171659077 _._Certificate_JPN_Reg._5 928416.pdf
Converted PDF file(s) ( 11 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9Foreign Registration-10Foreign Registration-11

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant submits a copy of Japanese Trademark Registration Nos. 5643435 and 5928416 for the mark SALONPAS in stylized lettering, including an English translation signed by the translator. If the submission of these registration certificates are sufficient to support registration under Section 44(e), Applicant hereby requests that the Examining Attorney delete the Section 1(b) intent-to-use basis from the application. Additionally, the Applicant has satisfied the multiple-class application requirements by paying the required fees for two international classes which was included at the time of filing. As a simple courtesy to the Examiner, the original application repeated each class separately as it corresponds to each of the Japanese registrations and does not wish to include four classes but rather two, in Class 10 and Class 28

Correspondence Information (current):
      SCOTT S. HAVLICK
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@hollandhart.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): atticus.trademark.nobill@hollandhart.com; kmorita@hollandhart.com

The docket/reference number is 41961.0227.
Correspondence Information (proposed):
      Scott S. Havlick
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@hollandhart.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): atticus.trademark.nobill@hollandhart.com; kmorita@hollandhart.com

The docket/reference number is 41961.0227.

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: /Kazuyo Morita/     Date: 08/06/2020
Signatory's Name: Kazuyo Morita
Signatory's Position: Attorney of Applicant, Colorado Bar Member

Signatory's Phone Number: 303-473-2701

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:    SCOTT S. HAVLICK
   HOLLAND & HART LLP
   ATTN: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
Mailing Address:    Scott S. Havlick
   HOLLAND & HART LLP
   ATTN: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
        
Serial Number: 88810653
Internet Transmission Date: Thu Aug 06 13:39:43 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020080613394361
5861-88810653-7403293ba6031bc0e3386434e7
b3f69bfc93114e1c596f502dff97907fce46993f
-N/A-N/A-20200806133804463931