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. 88910278 ESSENTIALS(Standard Characters, see http://uspto.report/TM/88910278/mark.png) has been amended as follows:

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

REMARKS Likelihood of Confusion. The Examiner has rejected the mark under Section 1052(d) as being likely to be confused with Reg. No. 5,616,879 for the mark SURGICAL ESSENTIALS FOR LESS for Dental gloves; Dental hand pieces; Dental mirrors; Medical drapes of non-woven textile materials; Medical gloves; Medical examination gloves; Latex medical gloves; Surgical sutures, collectively referenced herein as medical gloves. The Applicant respectfully disagrees with the examiner's contentions as outlined hereinafter. The Applicant's mark and the Registered mark are different. Applicant's mark is only one word, that being "ESSENTIALS". This conveys a one word look, pronunciation and meaning. On the other hand, the registered mark is for an entire phrase "TOP SURGICAL ESSENTIALS FOR LESS". This has the distinct appearance of five words wherein the word essential is but one and appears in the middle of the phrase. Obviously, there is a distinct difference in the additional words, pronunciations and meanings. The Applicant's goods have been narrowed and now recite them as "medical apparel in the nature of tops, pants and jackets for use in medical examination and treatment". Applicant respectfully submits that the goods are different. Applicant's goods are clothing or apparel that is worn by medical staff. This type of clothing strives to be fashionable and in fashionable colors. The Registrants goods are for common medical gloves that are typically made of a rubber, latex or nitrile material and are simply utilitarian in nature. These medical gloves are not considered to be "apparel" and are not fashionable clothing in the least sense. These gloves are disposable medical goods. Thus, Applicant's medical apparel in the form of tops, pants and jackets are very different from medical rubber gloves provided by the Registrant. The purchasers of these goods are different as a person purchasing apparel is a person purchasing a good so that they look presentable and professional in a hospital environment. These people are typically looking for a product that is fashionable for this environment. The purchaser of the Registrant's goods is typically a hospital facility or the like looking for a medical necessity and is purchasing large volumes of such based on the price per item. These buyers are not purchasing the rubber/latex/nitrile glove based on any fashionable aspect at all. Again, these buyers are sophisticated buyers looking for a volume of medical gloves based on pricing. As the purchaser of medical tops, pants and jackets is different from the purchasers of medical gloves, the customers are different. The trade channels are also different. Applicant's trade channels relate to medical apparel which is sold through apparel suppliers. Registrant's goods relate to medical gloves that are sold through medical suppliers catering to disposable medical products or medical supplies. These buyers are searching for medical supplies and are not searching for clothing items such as tops, pants and jackets. Applicant submits that as the goods, the channels of trade, and the consumers are different, a likelihood of confusion does not exist. Merely Descriptive. The examiner has refused the registration based on the mark being merely descriptive. Applicant respectfully submits that Applicant is not sure if this rejection was intended or if it was the result of a previously prepared Office Action utilized in preparing the present Office Action. The reason for this is that the examiner erroneously states in the fourth paragraph under the heading MERELY DESCRIPTIVE" that "The applied-for mark is "ESSENTIALS" for use in connection with "Medical Personal Protective Equipment, Antibacterial alcohol skin sanitizer gel, Antibacterial spray, Antibacterial wipes". However, these medical products are not the Applicant's goods. Applicant originally filed for the goods "medical treatment apparel", which has now been amended to medical apparel in the nature of tops, pants and jackets for use in medical examination and treatment. The cited links also lends Applicant to believe there is an error as all links sited by the examiner relate to either a hand sanitizer or a face mask used to prevent the spread of diseases. These two goods are medical goods rather than apparel. None of these links and nothing sited by the examiner relates the word ESSENTIAL(S) being used in connection with apparel, or more specifically, tops, pants and jackets. Therefore, Applicant believes that this merely descriptive rejection was in error, and if not, that apparel is not considered an "essential items" in the manner recited in the links and intended by the examiner. Generic Advisory. Applicant believes that the mistake recited in the merely descriptive rejection has carried over to the generic advisory. Again, all links sited by the examiner relate to either a hand sanitizer or a face mask used to prevent the spread of diseases. None of these links and nothing sited by the examiner relates the word ESSENTIAL(S) being used in connection with apparel, or more specifically, tops, pants and jackets. Therefore, Applicant believes that this generic advisory rejection was in error, and if not, that apparel is not considered an "essential items" in the manner recited in the links and intended by the examiner. It is believed that the application has been placed in condition for passage to publication. An early notice to such effect is solicited. Respectfully submitted, /dorian b. kennedy/ Dorian B. Kennedy BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ, PC Monarch Plaza Suite 1600 3414 Peachtree Road NE Atlanta, Georgia 30326 (770) 406-8700 Docket No: 2170228-000186

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Medical treatment apparel
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 00/00/1999 and first used in commerce at least as early as 00/00/1999 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Medical treatment apparel; Medical apparel in the nature of tops, pants and jackets for use in medical examination and treatmentClass 010 for Medical apparel in the nature of tops, pants and jackets for use in medical examination and treatment
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 00/00/1999 and first used in commerce at least as early as 00/00/1999 , and is now in use in such commerce.

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

The owner's/holder's current attorney information: Dorian Kennedy. Dorian Kennedy of BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3414 PEACHTREE ROAD NE, SUITE 1500
      ATLANTA, Georgia 30326
      United States
The docket/reference number is 2170228-186.
      The phone number is 678-406-8705.
      The email address is ipdocketing@bakerdonelson.com

The owner's/holder's proposed attorney information: Dorian Kennedy. Dorian Kennedy of BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3414 PEACHTREE ROAD NE, SUITE 1500
      ATLANTA, Georgia 30326
      United States
The docket/reference number is 2170228-186.
      The phone number is 678-406-8705.
      The email address is trademarks@bakerdonelson.com

Dorian Kennedy 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):
      DORIAN KENNEDY
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@bakerdonelson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dkennedy@bakerdonelson.com

The docket/reference number is 2170228-186.
Correspondence Information (proposed):
      Dorian Kennedy
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@bakerdonelson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dkennedy@bakerdonelson.com

The docket/reference number is 2170228-186.

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: /dorian b. kennedy/     Date: 04/13/2021
Signatory's Name: Dorian B. Kennedy
Signatory's Position: Attorney of Record, GA Bar Member

Signatory's Phone Number: 6784068705 Signature method: Sent to third party for signature

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:    DORIAN KENNEDY
   BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ
   
   3414 PEACHTREE ROAD NE, SUITE 1500
   ATLANTA, Georgia 30326
Mailing Address:    Dorian Kennedy
   BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ
   3414 PEACHTREE ROAD NE, SUITE 1500
   ATLANTA, Georgia 30326
        
Serial Number: 88910278
Internet Transmission Date: Tue Apr 13 13:07:45 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20210413130745397
341-88910278-770a469e4c4231ff18a8451598d
2b4c9622bb17cd47664d026a995736306684a3-N
/A-N/A-20210413123755248306