Response to Office Action

PTO- 1957

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

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.

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PTO- 1957

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

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.

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90008284 INSIGNIA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9000828 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Aftershave; Antiperspirants; Cologne; After-shave; After-shave lotions; After-shave balms; After shave lotions; Aftershave cologne; Anti-perspirants; Antiperspirants and deodorants for personal use; Antiperspirants for personal use; Body lotion; Body lotions; Body spray used as a personal deodorant and as fragrance; Body sprays; Body sprays, namely, water in atomized containers used to produce a cooling effect; Breath freshening sprays; Colognes, perfumes and cosmetics; Deodorant for personal use; Deodorant soap; Eau-de-toilette; Eau de toilette; Eau de toilette and eau de cologne; Hair gel; Hair gel and hair mousse; Hair gels; Hair sprays and hair gels; Hair styling gel; Hand cream; Hand creams; Perfume; Perfume oils; Perfumed creams; Perfumed extracts for tissues and perfumes; Perfumed powders; Perfumed soap; Perfumed soaps; Perfumes; Shampoo-conditioners; Shaving cream; Shaving creams; Shaving foam; Shaving gel; Shaving gels; Shower gel; Shower gels; Shower and bath gel; After-shave creams; After-shave gel; Bath and shower gels and salts not for medical purposes; Cosmetic hand creams; Deodorants and antiperspirants; Eau de cologne; Eau de perfume; Eau-de-cologne; Eaux de cologne; Hair conditioner; Hair shampoo; Moisturizing body lotions; Non-medicated hand soaps; Non-medicated liquid soap; Non-medicated liquid soaps; Perfumes and colognes; Perfumes, aftershaves and colognes; Perfumes, eau de colognes and aftershaves; Perfumes, eaux de cologne and aftershaves; Pre-shave gels; Scented body lotions and creams; Scented body spray
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 01/01/1986 and first used in commerce at least as early as 01/01/1986 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Aftershave; Antiperspirants; Body spray used as a personal deodorant and as fragrance; Cologne; Eau de toilette; After-shave; Perfume; After-shave lotions; Shaving foam; After-shave balms; Eau de perfume; After shave lotions; Shower gel; Aftershave cologne; Anti-perspirants; Antiperspirants and deodorants for personal use; Antiperspirants for personal use; Body lotion; Body lotions; Body sprays; Body sprays, namely, water in atomized containers used to produce a cooling effect; Breath freshening sprays; Colognes, perfumes and cosmetics; Deodorant for personal use; Deodorant soap; Eau-de-toilette; Eau de toilette and eau de cologne; Hair gel; Hair gel and hair mousse; Hair gels; Hair sprays and hair gels; Hair styling gel; Hand cream; Hand creams; Perfume oils; Perfumed creams; Perfumed extracts for tissues and perfumes; Perfumed powders; Perfumed soap; Perfumed soaps; Perfumes; Shampoo-conditioners; Shaving cream; Shaving creams; Shaving gel; Shaving gels; Shower gels; Shower and bath gel; After-shave creams; After-shave gel; Bath and shower gels and salts not for medical purposes; Cosmetic hand creams; Deodorants and antiperspirants; Eau de cologne; Eau-de-cologne; Eaux de cologne; Hair conditioner; Hair shampoo; Moisturizing body lotions; Non-medicated hand soaps; Non-medicated liquid soap; Non-medicated liquid soaps; Perfumes and colognes; Perfumes, aftershaves and colognes; Perfumes, eau de colognes and aftershaves; Perfumes, eaux de cologne and aftershaves; Pre-shave gels; Scented body lotions and creams; Scented body sprayClass 003 for Aftershave; Body spray used as a personal deodorant and as fragrance; Eau de toilette; Perfume; Shaving foam; Eau de perfume; Shower gel
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 02/05/2016 and first used in commerce at least as early as 02/05/2016 , 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 an image of the relevant products as used in commerce..
"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].
Specimen File1


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

Applicant proposes to amend the following:

Current:
Class 005 for Antibacterial wipes; Disinfectant liquid soaps; Disinfectant soap; Disinfectants for hygiene purposes; Disinfecting wipes; Hand-sanitizing preparations; Sanitizing wipes; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid soap; Antibacterial liquid soaps; Antibacterial alcohol skin sanitizer gel; Antimicrobial hand-sanitizing preparations; Antimicrobial handwash; Disinfectant hand soaps; Disinfectant liquid soap; Disinfecting handwash
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 01/01/1986 and first used in commerce at least as early as 01/01/1986 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Antibacterial wipes; Disinfectant liquid soaps; Disinfecting wipes; Disinfectant soap; Hand-sanitizing preparations; Disinfectants for hygiene purposes; Sanitizing wipes; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid soap; Antibacterial liquid soaps; Antibacterial alcohol skin sanitizer gel; Antimicrobial hand-sanitizing preparations; Antimicrobial handwash; Disinfectant hand soaps; Disinfectant liquid soap; Disinfecting handwashClass 005 for Antibacterial wipes; Disinfecting wipes; Hand-sanitizing preparations;
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 05/07/2020 and first used in commerce at least as early as 05/07/2020 , 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 an amazon listing showing use of the relevant mark in commerce..
"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:
SPU1-2603302029372000d82f aa813be425e-2021032217355 9576198_._AMAZON_1.PDF
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6


Webpage URL: http://www.amazon.com/Insignia-Sanitizer-Antiseptic-Non-Sterile-Solution/dp/B08C3QKK6R/ref=sr_1_6?crid=102E95OAEP48M&dchild=1&keywords%E2%80%A6
Webpage Date of Access: 03/19/2021

ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to examiner's request for additional information/documenation, applicant response as follows: (1) Applicant has submitted specimens Eau de perfume and Hand-sanitizing preparations; (2) The specimens were not created for submission wiht the application; (3) Applicant's goods are available on inter alia Amazon and has provided specimens showing evidence of the same; (4) N/A (5) The products were first available in commerce on the dates specified in response to this office action. (6) Applicant is provided representative invoices and bill of laddings evidecing sales of the relevant products. Applicants sales data for the relevant goods are as follows: Insignia After Shave $ 2,384.88 Insignia Shower Gel $ 5,544.00 Insignia Shaving Foam $ 1,881.60 Insignia Body Spray $ 16,420.08 Insignia Hand Sanitizes $ 413,196.36 Insignia Disinfectant Spray $ 235,809.00 Insignia Antibacterial Wet Wipes $ 353,100.00 Insignia Eau De Parfum / Eau De Toilette $ 78,480.00

Original PDF file:
mis-2603302029372000d82fa a813be425e-20210322173559 576198_._11138_-_-_Bill_o f_Ladding_-_Venus_Trading.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-2603302029372000d82fa a813be425e-20210322173559 576198_._92019_-_Venus_Tr ading_Inc_-_1x40_Insignia _EDT_100ml_-USA__1_.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-2603302029372000d82fa a813be425e-20210322173559 576198_._t19092019_-_Venu s_Trading_Inc_-_1x40_Insi gnia_EDT_100ml_-USA.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-2603302029372000d82fa a813be425e-20210322173559 576198_.__Inc_-Insignia_H and_Sanitizers_-_PI_30214 -_100ml-250ml-500ml.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-2603302029372000d82fa a813be425e-20210322173559 576198_._erfume_World_Inc _-Insignia_Antibacterial_ Wet_Wipes-_PI_30252.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-1-2603302029372000d82 faa813be425e-202103221735 59576198_._9872_-_Esteem_ Brands_USA_Insignia_Toile tries_and_Special_Deo.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-1-2603302029372000d82 faa813be425e-202103221735 59576198_._11138_-_-_Bill _of_Ladding_-_Venus_Tradi ng.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1

The owner's/holder's proposed attorney information: Rick Ruz, Esq.. Rick Ruz, Esq. of Ruz & Ruz, PL, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      7355 SW 87th Avenue, Suite 200
      Miami, Florida 33173
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The phone number is 305-962-1061.
      The fax number is 888-506-2833.
      The email address is rickruz@ruzlaw.com

Rick Ruz, Esq. 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):
      UNIVERSAL TOILETRIES CORPORATION LIMITED
      PRIMARY EMAIL FOR CORRESPONDENCE: kshah@universaltoiletries.co.uk
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cpatel@universaltoiletries.co.uk
Correspondence Information (proposed):
      Rick Ruz, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: rickruz@ruzlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cpatel@universaltoiletries.co.uk

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)
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: /Rick Ruz/      Date: 03/22/2021
Signatory's Name: Rick Ruz, Esq.
Signatory's Position: Attorney of Record, Florida Bar Member
Signatory's Phone Number: 305-921-9326

Signature method: Signed directly within the form

Response Signature
Signature: /Rick Ruz/     Date: 03/22/2021
Signatory's Name: Rick Ruz, Esq.
Signatory's Position: Attorney of Record, Florida Bar Member

Signatory's Phone Number: 305-921-9326 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:    UNIVERSAL TOILETRIES CORPORATION LIMITED
   UNIVERSAL TOILETRIES CORPORATION LIMITED
   
   UNIT 7 BERMER PLACE, IMPERIAL WAY
   WATFORD, LONDON,UK, WD244AY
Mailing Address:    Rick Ruz, Esq.
   Ruz & Ruz, PL
   7355 SW 87th Avenue, Suite 200
   Miami, Florida 33173
        
Serial Number: 90008284
Internet Transmission Date: Mon Mar 22 18:23:54 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXX:X
XXX:XXXX-20210322182354614142-90008284-7
70e9f55c6646c8c5bee32c35ee8819b73e382951
c6d686660fc3777f51e74bbdf-N/A-N/A-202103
22173559576198