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. 90152261 DUO(Standard Characters, see http://uspto.report/TM/90152261/mark.png) has been amended as follows:

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

As it pertains to United States Reg. No. 5098093, Applicant respectfully submits that, notwithstanding the fact that the registration should never have been issued because, upon review of the record, the registrant?s specimen of use submitted with the application did not establish use of the mark in connection with any of the applied-for products (the specimen does not correspond to a single item claimed in the registration), the USPTO did not find a likelihood of confusion between Applicant?s previously filed Application No. 88439565 covering ?Battery- operated hot water carafe? and United States Reg. No. 5098093 thus there is no likelihood of confusion between United States Reg. No. 5098093 and the subject application as the USPTO?s previous practice and precedent indicates that a kettle is not considered sufficiently related to a carafe. Accordingly, Applicant respectfully requests that the refusal based on United States Reg. No. 5098093 is withdrawn. Applicant respectfully requests that Application No. 88766046 be withdrawn as a potential refusal on the grounds that the identification associated with Application No. 88766046 has been amended such that it no longer includes ?electric kettles?. Accordingly, as the goods associated with the respective marks are no longer related there is no likelihood of confusion and the prior pending application should be withdrawn as a possible grounds for refusing registration of the subject application. Regarding the identification of services, Applicant notes that the wording ?Battery-operated hot water carafe? was previously accepted in Application No. 88439565. Accordingly, Applicant does not believe that the requested amendment is warranted in the subject application. Furthermore, the Examining Attorney has indicated in the office action that a ?kettle? is defined as ?a metallic vessel usually used for boiling liquids.? Applicant submits that identifying its claimed product as a kettle is not accurate as the product is not metallic. As Applicant?s website demonstrates, Applicant?s product is not metallic and, as such, by definition is not a kettle and it would therefore be inaccurate to amend the identification to claim kettles as the products Applicant is seeking registration of the mark in connection with- http://myheatworks.com/pages/duo-carafe-specifications. Accordingly, Applicant respectfully requests that this amendment request is withdrawn.
Correspondence Information (current):
      CHRISTOPHER D. CASAVALE
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): chris.casavale@nelsonmullins.com
Correspondence Information (proposed):
      Christopher D. Casavale
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): chris.casavale@nelsonmullins.com

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: /Christopher D. Casavale/     Date: 07/09/2021
Signatory's Name: Christopher D. Casavale
Signatory's Position: Attorney of record, South Carolina bar member

Signatory's Phone Number: 843-534-4252 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:    CHRISTOPHER D. CASAVALE
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   
   301 SOUTH COLLEGE STREET, SUITE 2300
   CHARLOTTE, North Carolina 28202
Mailing Address:    Christopher D. Casavale
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   301 SOUTH COLLEGE STREET, SUITE 2300
   CHARLOTTE, North Carolina 28202
        
Serial Number: 90152261
Internet Transmission Date: Fri Jul 09 13:32:56 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021070913325657
2239-90152261-780772d97a8a322da78e9d07f7
addb9a76828501f93657d7fdbc2e7e3ca5380ca-
N/A-N/A-20210709132759273306