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 11/30/2023)

---

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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88829103 DOLLY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8882910 3/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: DOLLY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8882910 3/large)
Proposed: DOLLY (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the word "Dolly" in script form with a butterfly to its right.

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

Likelihood of Confusion The Examiner has cited the marks DOLLY MADISON and DOLLY-MIX against Applicant?s distinctive stylized design mark ?DOLLY? in script form with a butterfly to its right. The Lanham Act is intended to provide protection from confusing consumers as to the source of goods and services. It is intended to be measured in the actual marketplace and not in the abstract. As stated in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), a case relied upon by the Examining Attorney in the instant matter, the objective of the Lanham Act is ?making registration more liberal, dispensing with mere technical prohibitions and arbitrary provisions and modernizing the trademark statutes so that they will conform to legitimate present-day business practice.? Id.476 F. 2d 1357, 177 USPQ 563 at 566. The basic goal of the Lanham Act, as stated in DuPont, was ?the protection of trademarks, securing to the owner the goodwill of his business and protecting the public against spurious and falsely marked goods.? Id. In this particular case, the granting of Applicant?s application for registration will neither impinge upon the goodwill of the cited Registrant, nor harm the purchasing public. Additionally, a search through the Internet does not show any use of any kind related to the trademark DOLLY-MIX. There is the mere mention of the company, but no goods, services or website. An application for renewal of the DOLLY MADISON trademark was due in April 2020 and eight months later has not been filed. Accordingly, Applicant through its undersigned attorney is requesting that the Trademark Office deem this registration as expired. The test for likelihood of confusion is whether ordinary purchasers are likely to confuse the source of Ms. Parton?s Classes 21 and 27 with those purported products of DollyMix Dog Stuff Ltd. The Lanham Act is intended to provide protection from confusion on the consumer level and is intended to be measured in the actual marketplace, not the abstract. Moreover, the default being registration, it is clear the Act should be interpreted so as to facilitate rather than inhibit registration. See 15 U.S.C. ? 1052(d) (Lanham Act ? 2(d)) (providing ?No trademark....shall be refused registration....unless it....so resembles a [prior mark] as to be likely ....to cause confusion...? Dissimilarity of the Marks In comparing Applicant?s mark ? the word ?DOLLY? in script form with a butterfly to its right, with the cited registration, the marks must be considered in their entirety, as they would be by reasonable consumers. See TMEP ? 1207.01(b). A review of the marks in their entirety is also required under the ?Anti-Dissection Rule.? ?Under the anti-dissection rule, a composite mark is tested for its validity and distinctiveness by looking at it as a whole, rather than dissecting it into component parts.? J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, Vol. 2, ? 11.27, p. 11 -50 (4th Ed. 1996). This rule was applied by the U.S. Supreme Court in Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 64 L.Ed. 705, 40 S.Ct. 414 (1920), which provided the ?commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason, it should be considered in its entirety.? Id. at 545-46. This rule is applicable in this case because, when viewing the Applicant?s stylized mark as a whole, and that of the cited registrant?s in their entireties, the commercial impressions portrayed are very different and distinctive. Although both marks incorporate the word ?DOLLY,? the overall commercial impressions created by each is vastly different. No consumer, upon seeing the marks DOLLY-MIX and DOLLY in script form with a butterfly to its right, next to each other, would not think they were in any way affiliated with each other. In view of the distinctions between Applicant?s mark and the cited mark, when viewed in its entirety, Applicant submits that its mark is entitled to registration. CONCLUSION Based on the foregoing, Applicant submits that the differences between the marks are significant enough to prevent consumer confusion. Applicant believes this resolves the Examiner?s citations. In view of the foregoing, and having complied with all of the outstanding requirements of the Examining Attorney?s Office Action, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) rejections and promptly pass the subject application to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 021 for Tooth brush holders, bathroom glass holder, wastepaper basket, soap holder/dish, lotion dispenser, ceramic tissue box covers, cotton ball jars; dinnerware, plates, serving bowls, serving platters, glassware, napkin rings, napkin holders, napkin rings of precious metal, vases, pitchers, salt and pepper shakers, trivets, candle holders, water bottles sold empty, reusable indicate material composition, e.g., glass, stainless steel, etc. water bottles sold empty, cookware, wood cooking planks for use in grilling, cookware for use in microwave ovens, paella pans, pizza stones, roasting pans, pots and pans, skillets, steamers, tagines, woks, non-electric pressure cooker, bakeware, bakeware sets, baking dishes, casserole dishes, cooling racks for baked goods, pans, cake domes, pie dishes, tart pans, ramekins and soufflé dishes, baking mats, cookie cutters, cookie presses, colanders, cooking strainers, mixing bowls, cutting boards, oven mitts, glass jars, glass storage jars, mason jars, plastic storage containers, fermenting jars, jam jars, lunch boxes, kitchen sponges, kitchen timers, dish cloths, scrub brushes, pots and pans scrapers, rubber gloves, baskets for household purposes, coasters, wine coasters
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: Tooth brush holders, bathroom glass holder, wastepaper basket, soap holder/dish, lotion dispenser, ceramic tissue box covers, cotton ball jars; Tooth brush holders; dinnerware, plates, serving bowls, serving platters, glassware, napkin rings, napkin holders, napkin rings of precious metal, vases, pitchers, salt and pepper shakers, trivets, candle holders, water bottles sold empty, reusable indicate material composition, e.g., glass, stainless steel, etc. water bottles sold empty, cookware, wood cooking planks for use in grilling, cookware for use in microwave ovens, paella pans, pizza stones, roasting pans, pots and pans, skillets, steamers, tagines, woks, non-electric pressure cooker, bakeware, bakeware sets, baking dishes, casserole dishes, cooling racks for baked goods, pans, cake domes, pie dishes, tart pans, ramekins and soufflé dishes, baking mats, cookie cutters, cookie presses, colanders, cooking strainers, mixing bowls, cutting boards, oven mitts, glass jars, glass storage jars, mason jars, plastic storage containers, fermenting jars, jam jars, lunch boxes, kitchen sponges, kitchen timers, dish cloths, scrub brushes, pots and pans scrapers, rubber gloves, baskets for household purposes, coasters, wine coasters; bathroom glass holder; wastepaper basket; soap holder IN THE FORM OF A dish; lotion dispenser; ceramic tissue box covers; cotton ball jars; dinnerware; plates; serving bowls; serving platters; BEVERAGE glassware; napkin rings; napkin holders; napkin rings of precious metal; vases; pitchers; salt and pepper shakers; trivets; candle holders; water bottles sold empty; reusable indicate material composition, e.g., glass AND stainless steel, etc. water bottles sold empty; cookware, namely, pots and pans; wood cooking planks for use in grilling; cookware for use in microwave ovens; paella pans; pizza stones; roasting pans; pots and pans; skillets; steamers BEING COOKWARE; NON-ELECTRIC tagines; woks; non-electric pressure cooker; bakeware; bakeware sets; baking dishes; casserole dishes; cooling racks for baked goods; pans; cake domes; pie dishes; tart pans; ramekins and soufflé dishes; baking mats; cookie cutters; HAND-OPERATED cookie presses; colanders; cooking strainers; mixing bowls; cutting boards; oven mitts; glass jars; glass storage jars; mason jars; plastic storage containers FOR HOUSEHOLD OR DOMESTIC USE; GLASS fermenting jars; jam jars; lunch boxes; kitchen sponges; kitchen timers, dish cloths; scrub brushes; pots and pans scrapers; rubber HOUSEHOLD gloves; baskets for household purposes; coasters NOT OF PAPER OR TEXTILE; wine coasters NOT OF PAPER OR TEXTILEClass 021 for Tooth brush holders; bathroom glass holder; wastepaper basket; soap holder IN THE FORM OF A dish; lotion dispenser; ceramic tissue box covers; cotton ball jars; dinnerware; plates; serving bowls; serving platters; BEVERAGE glassware; napkin rings; napkin holders; napkin rings of precious metal; vases; pitchers; salt and pepper shakers; trivets; candle holders; water bottles sold empty; reusable indicate material composition, e.g., glass AND stainless steel, etc. water bottles sold empty; cookware, namely, pots and pans; wood cooking planks for use in grilling; cookware for use in microwave ovens; paella pans; pizza stones; roasting pans; pots and pans; skillets; steamers BEING COOKWARE; NON-ELECTRIC tagines; woks; non-electric pressure cooker; bakeware; bakeware sets; baking dishes; casserole dishes; cooling racks for baked goods; pans; cake domes; pie dishes; tart pans; ramekins and soufflé dishes; baking mats; cookie cutters; HAND-OPERATED cookie presses; colanders; cooking strainers; mixing bowls; cutting boards; oven mitts; glass jars; glass storage jars; mason jars; plastic storage containers FOR HOUSEHOLD OR DOMESTIC USE; GLASS fermenting jars; jam jars; lunch boxes; kitchen sponges; kitchen timers, dish cloths; scrub brushes; pots and pans scrapers; rubber HOUSEHOLD gloves; baskets for household purposes; coasters NOT OF PAPER OR TEXTILE; wine coasters NOT OF PAPER OR TEXTILE
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 027 for Tub mats, bath mats, rugs, bathroom rugs, wall coverings, carpet
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: Tub mats, bath mats, rugs, bathroom rugs, wall coverings, carpet; BATHTUB mats; bath mats; rugs; bathroom rugs; wall coverings OF TEXTILE; carpetClass 027 for BATHTUB mats; bath mats; rugs; bathroom rugs; wall coverings OF TEXTILE; carpet
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
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies DOLLY PARTON, whose consent(s) to register is made of record.

Original PDF file:
consent-3810653100-235257 861_._DP_Consent.pdf
Converted PDF file(s) ( 1 page) Consent File1
Correspondence Information (current):
      Willmore F. Holbrow III
      PRIMARY EMAIL FOR CORRESPONDENCE: wholbrow@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jgass@buchalter.com; ipdocket@buchalter.com

The docket/reference number is D6525-5025.
Correspondence Information (proposed):
      Willmore F. Holbrow III
      PRIMARY EMAIL FOR CORRESPONDENCE: wholbrow@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jgass@buchalter.com; ipdocket@buchalter.com

The docket/reference number is D6525-5025.

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: /Willmore F. Holbrow III/     Date: 12/10/2020
Signatory's Name: Willmore F. Holbrow III
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 2138910700

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:    Willmore F. Holbrow III
   BUCHALTER
   SUITE 1500
   1000 WILSHIRE BOULEVARD
   LOS ANGELES, California 90017-2457
Mailing Address:    Willmore F. Holbrow III
   BUCHALTER
   SUITE 1500
   1000 WILSHIRE BOULEVARD
   LOS ANGELES, California 90017-2457
        
Serial Number: 88829103
Internet Transmission Date: Thu Dec 10 23:56:58 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020121023565885
3351-88829103-7500f253d058e823dea038c383
1331e311bbb3eed77173ee20bedbd8dcc715b-N/
A-N/A-20201210235257861501