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. 90097980 AMETHYST PREMIER COLLECTION (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9009798 0/large) has been amended as follows:

EVIDENCE
Evidence has been attached: Arguments in response to Office Action issued December 8, 2020, a copy of a printout from the TSDR showing abandonment of USSN 90/012,561 and executed Declaration in Support of Section 2(f) Claim of Acquired Distinctiveness of the mark PREMIER COLLECTION.
Original PDF file:
evi_199119214193-20210528 165420262228_._Amethyst_R OA.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_199119214193-20210528 165420262228_._Amethyst_2 f_Executed.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_199119214193-20210528 165420262228_._evidence.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Tanning creams, lotions and gels; tanning skin creams, tanning lotions and tanning gels for accelerating, enhancing, intensifying and extending tans; after tanning gels; body and facial bronzers
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: Tanning creams, lotions and gels; tanning skin creams, tanning lotions and tanning gels for accelerating, enhancing, intensifying and extending tans; after tanning gels; body and facial bronzers; all the foregoing containing amethystClass 003 for Tanning creams, lotions and gels; tanning skin creams, tanning lotions and tanning gels for accelerating, enhancing, intensifying and extending tans; after tanning gels; body and facial bronzers; all the foregoing containing amethyst
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


ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use AMETHYST apart from the mark as shown.


Description of mark
The mark consists of the word "AMETHYST" in stylized lettering written vertically above a palm tree design with the right side of the trunk circling above the palm tree to the left of the words "PREMIER COLLECTION".

SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

Correspondence Information (current):
      CATHRYN A. BERRYMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: cberryman@winstead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ngraham@winstead.com; tmdocket@winstead.com

The docket/reference number is 47226-K077US.
Correspondence Information (proposed):
      Cathryn A. Berryman
      PRIMARY EMAIL FOR CORRESPONDENCE: cberryman@winstead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ngraham@winstead.com; tmdocket@winstead.com

The docket/reference number is 47226-K077US.

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
Original PDF file:
HS_199119214193-165420262 _._Amethyst_2f_Executed.pdf
Converted PDF file(s) (1 page) Signature File1
Signatory's Name: Shannon Naylor
Signatory's Position: Director of Marketing
Signature method: Handwritten

Response Signature
Signature: /Cathryn A. Berryman/     Date: 05/28/2021
Signatory's Name: Cathryn A. Berryman
Signatory's Position: Attorney of record, Texas bar member
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:    CATHRYN A. BERRYMAN
   WINSTEAD PC
   SUITE 500
   2728 N. HARWOOD STREET
   DALLAS, Texas 75225
Mailing Address:    Cathryn A. Berryman
   WINSTEAD PC
   SUITE 500
   2728 N. HARWOOD STREET
   DALLAS, Texas 75225
        
Serial Number: 90097980
Internet Transmission Date: Fri May 28 17:15:18 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20210528171518
275794-90097980-7804f640e3c02e2949766b92
412eb275cb4de42e99641d09d39f2fb5e77-N/A-
N/A-20210528165420262228