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)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88945517 HARTZ(Standard Characters, see http://uspto.report/TM/88945517/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(e)(4), asserting that the Applicant’s HARTZ mark (“Applicant’s Mark”) is primarily merely a surname. Applicant respectfully disagrees with the refusal.

The HARTZ brand has been in use for a wide variety of products for pets for over 50 years. Applicant owns numerous registrations for the HARTZ mark, in Classes 3, 5, 16, and 21 and others (see below). Accordingly, the Trademark Office has already addressed the registerability of the mark HARTZ in these classes. While the Consistency Initiative doesn’t apply to some of these prior registrations since they are more than 5 years old, Applicant submits that a mark in exclusive and continuous use for 5 decades and as well-known as the HARTZ mark should not be the subject of a surname refusal (http://www.gov.uspto.report/trademark/trademark-updates-and-announcements/consistency-initiative). Nor should a Section 2(f) statement be necessary where the USPTO has issued many registrations for the HARTZ mark for a wide variety of pet products, beginning with the first registration in 1965. The fact that the USPTO did not consider HARTZ to be primarily a surname with regard to these registrations should significantly weigh in favor of withdrawing the surname refusal.

Applicant’s request complies with the provisions of the Consistency Initiative with respect to Class 5, namely (1) HARTZ is co-pending and owned by the Applicant; (2) HARTZ ULTRAGUARD RID WORM PASTE is within the 5-year window; (3) the current application is in pre-publication status; and (4) the allegedly inconsistent treatment has already occurred.

The instant application should therefore be approved and passed to publication.

EVIDENCE
Evidence has been attached: HARTZ registrations in various classes
Original PDF file:
evi_104225244194-20201215 102954511914_._02256079.PDF
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Pet stain removers
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 05/01/2015 and first used in commerce at least as early as 05/01/2015 , and is now in use in such commerce.


Proposed:
Class 003 for Pet stain removers
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 05/01/2015 and first used in commerce at least as early as 05/01/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 003. The specimen(s) submitted consists of substitute specimen showing trademark in use online.Webiste accessed on December 14, 2020. Website address is amazon.com.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-104225244194-2020121 5102954511914_._02256123.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

Applicant proposes to amend the following:

Current:
Class 005 for Diapers for pets; disposable housebreaking pads for use in training puppies; disposable pads for pets; incontinence diapers for pets; incontinence guards for pets; odor neutralizing sprays for carpets, clothing, fabric, linoleum, pet bedding, plastic, tile, and upholstery
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 05/01/2015 and first used in commerce at least as early as 05/01/2015 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Diapers for pets; disposable housebreaking pads for use in training puppies; incontinence diapers for pets; disposable pads for pets; incontinence guards being incontinence pads for pets; odor neutralizing sprays for carpets, clothing, fabric, linoleum, pet bedding, plastic, tile, and upholstery; incontinence guards for petsClass 005 for Diapers for pets; incontinence diapers for pets; incontinence guards being incontinence pads for pets; odor neutralizing sprays for carpets, clothing, fabric, linoleum, pet bedding, plastic, tile, and upholstery
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 05/01/2015 and first used in commerce at least as early as 05/01/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 005. The specimen(s) submitted consists of substitute specimen showing trademark in use online.Webiste accessed on December 14, 2020. Website address is amazon.com.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-104225244194-2020121 5102954511914_._02256135.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

Applicant hereby adds the following class of goods/services to the application:
New: Class 016 for Disposable housebreaking pads for use in training puppies; Disposable housebreaking pads for pets
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 05/01/2015 and first used in commerce at least as early as 05/01/2015 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 016 . The specimen(s) submitted consists of Specimen showing trademark in use online.Webiste accessed on December 14, 2020. Website address is amazon.com .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-104225244194-2020121 5102954511914_._02256139.PDF
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Correspondence Information (current):
      AMY B GOLDSMITH
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@tarterkrinsky.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): agoldsmith@tarterkrinsky.com

The docket/reference number is 4816-25.
Correspondence Information (proposed):
      Amy B Goldsmith
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@tarterkrinsky.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): agoldsmith@tarterkrinsky.com

The docket/reference number is 4816-25.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Amy B Goldsmith/      Date: 12/15/2020
Signatory's Name: Amy B. Goldsmith
Signatory's Position: Attorney of Record, New York Bar Member
Signatory's Phone Number: 2122168000


Response Signature
Signature: /Amy B Goldsmith/     Date: 12/15/2020
Signatory's Name: Amy B. Goldsmith
Signatory's Position: Attorney of Record, New York Bar member

Signatory's Phone Number: 2122168000

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:    AMY B GOLDSMITH
   TARTER KRINSKY & DROGIN LLP
   
   1350 BROADWAY
   NEW YORK, New York 10018
Mailing Address:    Amy B Goldsmith
   TARTER KRINSKY & DROGIN LLP
   1350 BROADWAY
   NEW YORK, New York 10018
        
RAM Sale Number: 88945517
RAM Accounting Date: 12/15/2020
        
Serial Number: 88945517
Internet Transmission Date: Tue Dec 15 10:57:56 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20201215105756
283446-88945517-750b7c269ca9e2b2aa7ecfc9
3e8cc557cc673b6fd84dfd31c50fb9e59d09bef1
020-DA-57555952-20201215102954511914