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)

---

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. 88042381 BLOC(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88042381/large) has been amended as follows:

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

This communication is responsive to the Office Action issued November 7, 2018.

The Examining Attorney has refused registration of Applicant’s mark in Class 16 only, based on a likelihood of confusion under Section 2(d) with U.S. Registration No. 5,102,428 of BLOCKX.

The Class 16 goods identified in the cited BLOCKX registration are a variety of stationery goods, namely, “paper and cardboard; bookbinding material; stationery; adhesives for stationery or household purposes; artists’ materials, namely, molds for modeling clays, paint trays, painters’ easels, artists’ watercolor saucers; paintbrushes; pastels, watercolor pictures, modeling powders and pastes for artistic use; chalk for writing and marking; items for writing and drawing, namely, pencils, pens, markers, crayons; paint boxes; canvas for painting.”  Matching the identification, the registrant appears to trade in special art supplies, particularly oil paint, as the registrant’s website bears out at http://www.blockx.be/en/produits/huiles.asp.  See attached.

Applicant now amends its Class 16 identification to delete stationery-type goods, including writing implements.  Also, Applicant has specified that the identified magazines, books, and guides specifically are in the field of travel, food, and leisure.  Applicant respectfully submits that it offers hotel services.  The identified publications supplement the guest experience of Applicant’s customers.

Applicant believes that, with the entry of the proposed amendments to the Class 16 identification of goods, which focuses Applicant’s goods on publications in the field of travel, food and leisure, as compared to the stationery and art supply type items identified by registrant, the respective goods are different and unrelated.  Along with this, given the differences between the marks themselves, Applicant’s mark is distinguishable from the mark in the cited registration.  Accordingly, Applicant respectfully requests that the Section 2(d) refusal with respect to the Class 16 goods be withdrawn.

Applicant now amends the Class 41 and Class 43 identification of services in accordance with the Examining Attorney’s proposed suggestions.

The Office has refused registration under Section 44(e) on the basis Applicant was not the owner of the foreign registration on the filing date of the U.S. application.  Applicant submits a copy of the communication, issued by the European Union Intellectual Property Office on April 7, 2017, confirming the transfer of ownership of the base foreign registration, European Union Registration No. 009331869, to Applicant.  Given Applicant’s demonstration that it owns the base registration, Applicant respectfully requests that the refusal for registration under Section 44(e) be withdrawn.

In view of the foregoing remarks and proposed amendments herein, Applicant believes its application is now in condition for acceptance, and favorable action thereon is respectfully solicited.

 

 

EVIDENCE

Original PDF file:
evi_21620015371-20181130113017718763_._Blockx_-_Color_since_1865.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_21620015371-20181130122911814280_._EUTM_-_Recordation_Notice_-_Boxbuild_to_Bloc.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Magazines; books; maps; guides; stationery; promotional materials; note books; notepads; calendars; diaries; posters; conference materials; pencils; pens; writing implements
Original Filing Basis:
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 [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], 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: Magazines; Magazines in the field of travel, leisure, and food; books; books in the field of travel, leisure, and food; maps; guides; guides in the field of travel, leisure, and food; stationery; promotional materials; note books; notepads; calendars; diaries; posters; conference materials; pencils; pens; writing implementsClass 016 for Magazines in the field of travel, leisure, and food; books in the field of travel, leisure, and food; maps; guides in the field of travel, leisure, and food
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 [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Arranging and conducting functions, parties, conferences, conventions, exhibitions and meetings; all the aforesaid services being provided within hotels or motels in connection with the provision of hotel or motel services
Original Filing Basis:
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 [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], 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: Arranging and conducting functions, parties, conferences, conventions, exhibitions and meetings; Educational and entertainment services, namely, arranging and conducting parties, educational conferences, conventions for educational or cultural purposes, exhibitions and meetings for entertainment purposes, all the aforesaid services being provided within hotels or motels in connection with the provision of hotel or motel services; all the aforesaid services being provided within hotels or motels in connection with the provision of hotel or motel servicesClass 041 for Educational and entertainment services, namely, arranging and conducting parties, educational conferences, conventions for educational or cultural purposes, exhibitions and meetings for entertainment purposes, all the aforesaid services being provided within hotels or motels in connection with the provision of hotel or motel 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Provision of temporary accommodation; hotel services; motel services; hotel reservation services; booking services for hotel and motel accommodation; provision of function, conference, convention, party, exhibition and meeting facilities; services comprising a rewards programme for frequent users of hotels in the form of accumulated benefits
Original Filing Basis:
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 [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], 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: Provision of temporary accommodation; hotel services; motel services; hotel reservation services; hotel reservation services for others; booking services for hotel and motel accommodation; booking services for hotel and motel accommodation for others; provision of function, conference, convention, party, exhibition and meeting facilities; services comprising a rewards programme for frequent users of hotels in the form of accumulated benefitsClass 043 for Provision of temporary accommodation; hotel services; motel services; hotel reservation services for others; booking services for hotel and motel accommodation for others; provision of function, conference, convention, party, exhibition and meeting facilities
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 [ European Union Trademark - EUTM registration number 009331869 registered 11/04/2011 with a renewal date of __________ and an expiration date of 08/24/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

SIGNATURE(S)
Response Signature
Signature: /dig/     Date: 11/30/2018
Signatory's Name: David I. Greenbaum
Signatory's Position: Attorney of record, NY bar member

Signatory's Phone Number: 212.878.7942

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88042381
Internet Transmission Date: Fri Nov 30 14:12:42 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201811301412423
61587-88042381-6107703829afa6533bf64370c
2328a26cf4547c5acefcef49d9559e29825c4-N/
A-N/A-20181130122911814280