Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88894940 THE MAYBOURNE BEVERLY HILLS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8889494 0/large) has been amended as follows:

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

Please see the actual Argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: PDF of Applicant's actual Argument text and accompanying Exhibit A
Original PDF file:
evi_1-4722721062-20210127 124559775833_._Response_- _THE_MAYBOURNE_BEVERLY_HI LLS___Design.pdf
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_1-4722721062-20210127 124559775833_._Maybourne_ __Design_Exhibit_A.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for printed matter; periodical publications; magazines; books; cookery books; recipe books; posters; calendars; prints; art prints; greeting cards; notepads; address pads; diaries; printed instructional and teaching materials; journals; cartoons; educational and instructional materials; photographs; pictures; menus; pen holders; pens; pencils; stickers; albums; address books; date books; postcards; note cards; notebooks; writing papers; stencil kits; pads; postage stamps; stationery; tissue papers; paper decorations for cakes; baking paper; containers and cases of paper or card for baking
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: printed matter; Periodical publications in the fields of travel, hotels, restaurants, bars, art, fashion, shopping, health and beauty; periodical publications; magazines in the fields of travel, hotels, restaurants, bars, art, fashion, shopping, health and beauty; magazines; books in the fields of travel, accommodation, restaurants, bars, hotels, hotel management, restaurant management, bar management; books; cookery books, cook books; cookery books; recipe books; posters; calendars; prints, namely printed paper signs and posters; prints; art prints; greeting cards; notepads; address pads; diaries; printed instructional and teaching materials in the fields of hotel management, restaurant management and bar management; printed instructional and teaching materials; blank writing journals; journals; cartoons, namely cartoon prints and printed cartoon strips; cartoons; educational and instructional materials in the fields of hotel management, restaurant management and bar management; educational and instructional materials; photographs; pictures; menus, namely printed menus; menus; pen holders; pens; pencils; stickers; photograph albums; albums; address books; date books; postcards; note cards; notebooks; writing papers; stencil kits, namely, stencils; stencil kits; blank writing paper pads, memo pads; pads; postage stamps; stationery; tissue papers; paper decorations for cakes; baking paper; containers and cases of paper or card for baking, namely, paper and cardboard cake boxes, paper and cardboard cake circles; containers and cases of paper or card for bakingClass 016 for Periodical publications in the fields of travel, hotels, restaurants, bars, art, fashion, shopping, health and beauty; magazines in the fields of travel, hotels, restaurants, bars, art, fashion, shopping, health and beauty; books in the fields of travel, accommodation, restaurants, bars, hotels, hotel management, restaurant management, bar management; cookery books, cook books; recipe books; posters; calendars; prints, namely printed paper signs and posters; art prints; greeting cards; notepads; address pads; diaries; printed instructional and teaching materials in the fields of hotel management, restaurant management and bar management; blank writing journals; cartoons, namely cartoon prints and printed cartoon strips; educational and instructional materials in the fields of hotel management, restaurant management and bar management; photographs; pictures; menus, namely printed menus; pen holders; pens; pencils; stickers; photograph albums; address books; date books; postcards; note cards; notebooks; writing papers; stencil kits, namely, stencils; blank writing paper pads, memo pads; postage stamps; stationery; tissue papers; paper decorations for cakes; baking paper; containers and cases of paper or card for baking, namely, paper and cardboard cake boxes, paper and cardboard cake circles
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 043 for hotel services; restaurant, café and bar services; banqueting and catering services; brokering reservations for hotels, boarding houses or the like; arranging and booking hotels and accommodation service; provision of facilities for meetings, functions, conferences and conventions; reservation services for temporary accommodation; child minding services; information, advice and consultancy relating to the aforesaid services
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: Hotel services; restaurant, café and bar services; banqueting and catering services; brokering reservations for hotels, boarding houses or the like; brokering reservations for hotels; arranging and booking hotels and accommodation service; arranging and booking hotels and accommodation services, namely, hotel accommodation services; provision of facilities for meetings, functions, conferences and conventions; conferences, and conventions, namely, provision of facilities for conferences and conventions; reservation services for temporary accommodation; reservation services for temporary accommodations; child minding services; child minding services, namely, day nurseries, babysitting; information, advice and consultancy relating to the aforesaid servicesClass 043 for Hotel services; restaurant, café and bar services; banqueting and catering services; brokering reservations for hotels; arranging and booking hotels and accommodation services, namely, hotel accommodation services; conferences, and conventions, namely, provision of facilities for conferences and conventions; reservation services for temporary accommodations; child minding services, namely, day nurseries, babysitting; information, advice and consultancy relating to the aforesaid services
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 044 for hairdressing and hair styling services; provision of beauty treatments and therapies; pedicure and manicure services; depilatory services; cosmetic services; health care services; health spa services; spa services; massage services; flower arranging services; information, advice and consultancy relating to the aforesaid services
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: Hairdressing and hair styling services; provision of beauty treatments and therapies; provision of beauty treatments and therapies, namely, beauty salon services; pedicure and manicure services; depilatory services; cosmetic services; cosmetic services, namely, skin care, body care, face care services; health care services; health spa services; health spa services, namely, health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services; spa services; spa services, day spa services, namely, nail care, manicures, pedicures and nail enhancements; massage services; flower arranging services; information, advice and consultancy relating to the aforesaid servicesClass 044 for Hairdressing and hair styling services; provision of beauty treatments and therapies, namely, beauty salon services; pedicure and manicure services; depilatory services; cosmetic services, namely, skin care, body care, face care services; health care services; health spa services, namely, health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services; spa services, day spa services, namely, nail care, manicures, pedicures and nail enhancements; massage services; flower arranging services; information, advice and consultancy relating to the aforesaid services
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      DAVID A.W. WONG
      PRIMARY EMAIL FOR CORRESPONDENCE: dwong@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; cbrinson@btlaw.com

The docket/reference number is 82229-320389.
Correspondence Information (proposed):
      David A.W. Wong
      PRIMARY EMAIL FOR CORRESPONDENCE: dwong@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; cbrinson@btlaw.com; bssmith@btlaw.com

The docket/reference number is 82229-320389.

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: /bssmith/     Date: 01/27/2021
Signatory's Name: Brittany S. Smith
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member

Signatory's Phone Number: 317-236-1313 Signature method: Signed directly within the form

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:    DAVID A.W. WONG
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
Mailing Address:    David A.W. Wong
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
        
Serial Number: 88894940
Internet Transmission Date: Wed Jan 27 13:08:36 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021012713083659
0767-88894940-76070ac489fcbaee3cba61999e
72a69e97516cb3b5bf4f533188f91977f8cd2fb6
6-N/A-N/A-20210127124559775833