PTO- 2301
`
`Approved for use through 03/31/2024. OMB 0651-0054
`
`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
`
`Petition to Director
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`PETITION
`
`PETITION STATEMENT
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`OWNER SECTION (current)
`
`NAME
`
`INTERNAL ADDRESS
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`The table below presents the data as entered.
`
`Entered
`
`90165084
`
`LAW OFFICE 118
`
`I am filing a petition to reverse the holding of abandonment for incomplete response.
`
`mark
`
`BONTEX
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Stanco USA, Inc.
`
`#1155
`
`1314 S. King Street
`
`Honolulu
`
`Hawaii
`
`96814
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`EMAIL
`
`OWNER SECTION (proposed)
`
`NAME
`
`INTERNAL ADDRESS
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`XXXX
`
`Stanco USA, Inc.
`
`#1155
`
`1314 S. King Street
`
`Honolulu
`
`Hawaii
`
`96814
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`EMAIL
`
`EXPLANATION OF FILING
`
`Please see attached Petition
`
`XXXX
`
`

`

`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (5 pages)
`
`MISCELLANEOUS STATEMENT
`
`        MISCELLANEOUS FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (5 pages)
`
`evi_1081813041-180721752_ ._BONTEX_Petition.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0002.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0003.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0004.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0005.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0006.JPG
`
`Please see and consider attached Petition.
`
`SPN0-1081813041-180721752 _._BONTEX_Petition.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0007.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0008.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0009.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0010.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\901\650\90165084\xml10 \PDR0011.JPG
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`SIMOR L. MOSKOWITZ
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`trademarkmail@whda.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`smoskowitz@whda.com; tjeffery@whda.com
`
`DOCKET/REFERENCE NUMBER
`
`TM3439US01
`
`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`SIMOR L. MOSKOWITZ
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`trademarkmail@whda.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`smoskowitz@whda.com; tjeffery@whda.com
`
`DOCKET/REFERENCE NUMBER
`
`PAYMENT SECTION
`
`PETITION TO DIRECTOR FEE
`
`NUMBER OF CLASSES
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`SIGNATURE METHOD
`
`TM3439US01
`
`250
`
`1
`
`250
`
`/Simor L. Moskowitz/
`
`Simor L. Moskowitz
`
`Attorney of Record, Member DC and MD Bar
`
`703-827-3800
`
`06/06/2022
`
`Signed directly within the form
`
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`PETITION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`/Simor L. Moskowitz/
`
`Simor L. Moskowitz
`
`Attorney of Record, Member DC and MD Bars
`
`703-827-3800
`
`06/06/2022
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized U.S.-Licensed Attorney
`
`SIGNATURE METHOD
`
`Signed directly within the form
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Mon Jun 06 18:14:19 ET 2022
`
`USPTO/PGP-XXX.XX.XXX.XX-2
`0220606181419407089-90165
`084-80028157a088dce57b659
`9cff4eb55bc1dd2dcd868562f
`d965f8ad1ef569f8f0-CC-141
`54830-2022060618072175228
`7
`
`PTO- 2301
`
`Approved for use through 03/31/2024. OMB 0651-0054
`
`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
`
`To the Commissioner for Trademarks:
`
`Petition to Director
`
`Application serial no. 90165084 BONTEX(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/90165084/large) has been
`amended as follows:
`
`PETITION
`Petition Statement
`I am filing a petition to reverse the holding of abandonment for incomplete response.
`
`EXPLANATION OF FILING
`Please see attached Petition
`
`EVIDENCE
`
`Original PDF file:
`evi_1081813041-180721752_ ._BONTEX_Petition.pdf
`Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
`
`OWNER AND/OR ENTITY INFORMATION
`The owner proposes to amend the following:
`Current: Stanco USA, Inc., a corporation of Hawaii, having an address of
`
`            #1155      1314 S. King Street
`      Honolulu, Hawaii 96814
`      United States
`      Email Address: XXXX
`
`Proposed: Stanco USA, Inc., a corporation of Hawaii, having an address of
`      #1155
`
`

`

`      1314 S. King Street
`      Honolulu, Hawaii 96814
`      United States
`      Email Address: XXXX
`
`Miscellaneous Statement
`Please see and consider attached Petition.
`
`Original PDF file:
`SPN0-1081813041-180721752 _._BONTEX_Petition.pdf
`Converted PDF file(s) ( 5 pages) Miscellaneous File1Miscellaneous File2Miscellaneous File3Miscellaneous File4Miscellaneous File5
`
`Correspondence Information (current):
`      SIMOR L. MOSKOWITZ
`      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkmail@whda.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smoskowitz@whda.com; tjeffery@whda.com
`
`The docket/reference number is TM3439US01.
`
`Correspondence Information (proposed):
`      SIMOR L. MOSKOWITZ
`      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkmail@whda.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smoskowitz@whda.com; tjeffery@whda.com
`
`The docket/reference number is TM3439US01.
`
`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 $250 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: /Simor L. Moskowitz/      Date: 06/06/2022
`Signatory's Name: Simor L. Moskowitz
`Signatory's Position: Attorney of Record, Member DC and MD Bar
`Signatory's Phone Number: 703-827-3800
`
`Signature method: Signed directly within the form
`
`Signature: /Simor L. Moskowitz/     Date: 06/06/2022
`Signatory's Name: Simor L. Moskowitz
`Signatory's Position: Attorney of Record, Member DC and MD Bars
`
`Signatory's Phone Number: 703-827-3800 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 petitioner'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 petitioner in this matter: the petitioner 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; the petitioner has filed a power of
`attorney appointing him/her in this matter; or the petitioner's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as
`an associate attorney in this matter.
`
`Mailing Address:    SIMOR L. MOSKOWITZ
`   WESTERMAN, HATTORI, LLP
`   SUITE 7500
`   8500 LEESBURG PIKE
`   TYSONS, Virginia 22182
`Mailing Address:    SIMOR L. MOSKOWITZ
`   WESTERMAN, HATTORI, LLP
`   SUITE 7500
`   8500 LEESBURG PIKE
`   TYSONS, Virginia 22182
`
`PAYMENT: 90165084
`PAYMENT DATE: 06/06/2022
`
`Serial Number: 90165084
`Internet Transmission Date: Mon Jun 06 18:14:19 ET 2022
`TEAS Stamp: USPTO/PGP-XXX.XX.XXX.XX-2022060618141940
`7089-90165084-80028157a088dce57b6599cff4
`eb55bc1dd2dcd868562fd965f8ad1ef569f8f0-C
`C-14154830-20220606180721752287
`
`        
`        
` 
`

`

`Applicant: Stanco USA Inc.
`
`Serial No.: 90/165084
`
`Filed: September 8, 2020
`
`Mark: BONTEX
`
`PETITION TO REVIVE APPLICATION PURSUANT TO 37 C.EF.R. 2.146
`
`Applicant hereby petitions to revive the above application or, in the alternative, to revise
`the full abandonmentto a “partial abandonment”of the application to simply delete
`“shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods”in Class 17.
`
`FACTS
`
`On February 15, 2022, the Examining Attorney issued a “non-final” Office Action
`objecting to the identification of goods. Specifically, the Examining Attorney objected to
`“shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods”in Class 25.
`
`Applicant timely filed a Response on March 17, 2022, in which it amended the
`identification of goods as follows:
`
`Class 17 -- Impregnated cellulose fiber web product in sheet and/orroll form resembling
`leather for use in manufacture of or as part of footwear insoles, headwear, visors and
`brims, backing for luggage, golf bags, briefcases, handbags, leather goods and belts;
`shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods
`
`Class 18 -- Artificial leather in the form of sheets and/orroll for use in manufacture, and
`especially for use in the manufacture of bags, trunks, travelling bags, luggage, golf
`bags, briefcases, handbags, leather goods and belts
`
`W
`
`Class 25 -- Shoe insoles;sheeinsolematerial ktagtorbelts visers_brms_ane size
`
`
`
`HO
`
`
`
`
`In so amending the application, Applicant noted —
`
`

`

`The Examining Attorney has objected to the goods "shoe insole material, backing for belts,
`visors, brims, and size bands in hats and head wear, and impregnated cellulose fiber web
`productin sheet and/orroll form for use the manufacture thereof" currently in Class 25 as being
`similar to "Impregnated cellulose fiber web product in sheet and/or roll form resembling leather
`for use in manufacture of or as part of footwear insoles, headwear, visors and brims, backing for
`luggage, golf bags, briefcases, handbags, leather goods and belts"identified in Class 17. The
`fact that they are "similar" should not be controlling as goods sometimescanfall into multiple
`classes. In any case, Applicant has deleted "shoe insole material, backing for belts, visors,
`brims, and size bands in hats and head wear" from Class 25, and moved these goods to Class
`17, without the preamble "Impregnated cellulose fiber web product in sheet and/or roll form
`resembling leather for use in manufacture of or as part of .". Applicant submits that the objection
`to the Class 25 identification and classification is now resolved, that the transfer of "shoe insole
`material, backing for belts, visors, brims, and size bands in hats and head wear"to Class 17 is
`appropriate, and that the application should now bein condition for acceptance.
`
`The Examining Attorney then issued the April 4, 2022 Office Action abandoning the
`application because —
`
`‘In this case, applicant did not submit a properly signed response that addressesall the issues
`raised in the outstanding Office action by the deadline stated in action by the deadline stated.
`The identification of goods in Class 17 remains unacceptable and the nature of the last item, i.e.
`shoeinsole material, backing for belts, visors, brims, and size bands in hats and head wear, and
`backing for luggage, golf bags, briefcases, handbags, leather goods, is not clear”.
`
`Applicant submits that the March 17, 2022 Responsedid addressall of the issues
`raised by the Examiner — (1) Applicant deleted the Class 25 good to which the
`Examining Attorney objected and (2) moved those goods to Class 17 with the preamble.
`In objecting to this amendmentin the April 4 Office Action abandoning the application,
`the Examiner forthe first time stated “The identification of goods in Class 17 remains
`unacceptable and the nature of the last item, |.e. shoe insole material, backing for belts,
`visors, brims, and size bandsin hats and head wear, and backing for luggage, golf
`bags, briefcases, handbags, leather goods, is not clear”.+
`
`ARGUMENT
`
`Applicantfirst submits thatit fully responded to the February 15, 2022 Office Action in
`its March 17, 2022 Response, and that it is improper and unfair for the Examining
`Attorney to abandon the goods movedfrom Class 25 to Class 17 as being “unclear”,
`when the only previous objection to these goods wasthat they were improperly
`classified in Class 25.
`
`1 In a previous Office Action, the Examining Attorney objected to the noted Class 25 goods
`(moved to Class 17) simply because “The bolded wording is similar to goods in Class 17 and if
`so, they should be deleted”; not becausethis identification “... is unclear”.
`
`

`

`In any case, Trademark Rule 2.65(a)(1), 37 C.F.R. §2.65(a)(1), provides thatif all
`refusals and/or requirements are expressly limited to certain goods/services, and the
`applicant fails to respond, or to respond completely, to an Office action, the application
`will be abandonedonly as to those particular goods/services. Here, the Office Action
`clearly stated that the refusal applied only to the asserted incorrectly classified goods in
`Class 25 -- “shoe insole material, backing for belts, visors, brims, and size bands
`in hats and head wear, and backing for luggage, golf bags, briefcases, handbags,
`leather goods”.
`
`Section 718.02(a) of the Trademark Manual of Examining Procedure provides as
`follows:
`
`Incomplete Response to Partial Refusal or Requirement. Partial abandonment mayalso occur
`when an applicantfails to file a complete responseto a final refusal or final requirement that is
`expressly limited to only certain goods/services/class(es).
`If an applicant files an incomplete
`response to a nonfinal action that is limited to only certain goods/services/class(es), the
`examining attorney should generally issue an action making all outstanding requirements and
`refusals final rather than partially abandoning the application. See TMEP §8718.03—718.03(b)
`regarding incomplete responses. When an examining attorney holds an application abandoned
`for failure to file a complete response, the applicant’s recourseis to file a petition to the Director
`under 37 C.F.R. §2.146 to reverse the holding. See TMEP §1713.01. If an applicantfiles an
`incomplete responseto a final action thatis limited to only certain goods/services/class(es) and
`there is time remaining in the responseperiod tofile a notice of appeal, the examining attorney
`musttreat it as a request for reconsideration and deny the request, but must wait to issue the
`partial abandonmentuntil all time to respond has expired. If there is no time remaining to appeal,
`the examining attorney must issue an examiner’s amendmentdeleting (abandoning) the
`goods/services/classes to which the refusal or requirement pertained. The examiner’s amendment
`must clearly set forth the changes that will be madeto the identification of goods/services. No
`prior authorization from the applicant or its attorney is needed to issue an examiner’s amendment
`in this situation.
`
`Failure to Respond to Partial Refusal or Requirement. When an applicantfails to respond to a
`refusal or requirementthat is expressly limited to only certain goods/services/class(es), the
`examining attorney should issue an examiner’s amendmentdeleting (abandoning) the
`goods/services/classes to which the refusal or requirement pertained. The examiner’s
`amendment should clearly set forth the changes that will be madeto the identification of
`goods/services in the application. No prior authorization from the applicant or the applicant’s
`
`qualified practitioner is needed to issue an examiner’s amendmentin this situation. TMEP
`8707.02.
`If the failure to respond to the partial refusal or requirement was unintentional, the
`applicant may file a petition to the Director to revive the deleted goods/services/classes within
`two monthsofthe issuance date of the examiner’s amendment. When seekingto revive a
`portion of an application that was partially abandoned, the applicant must use the TEASPetition
`to the Director under Trademark Rule 2.146 form. See TMEP §301 regarding the requirement to
`file electronically and §§81714-1714.01(g) regarding petitions to revive.
`
`

`

`The Examining Attorney contendsthat by not resolving the issue regarding the goods in
`question -- “shoe insole material, backing for belts, visors, brims, and size bands
`in hats and head wear, and backing for luggage, golf bags, briefcases, handbags,
`leather goods” — “... applicant did not submit a properly signed response that
`addressesall the issuesraised in the outstanding Office action by the deadline stated in
`action by the deadline stated.” In fact, the title of the April 4, 2022 Office Action
`acknowledgesthis contention —
`
`IMPORTANT NOTICE: APPLICATION IS ABANDONED
`
`Applicant’s Response Is Incomplete
`
`Accordingly, in view of the foregoing, at worst the application should have been only
`partially abandoned by deleting the goods in question “shoe insole material, backing
`for belts, visors, brims, and size bands in hats and head wear, and backing for
`luggage, golf bags, briefcases, handbags, leather goods” and accepting the
`application and allowing it to proceed for the remaining goods —
`
`Class 17 -- Impregnated cellulose fiber web product in sheet and/or roll form
`resembling leather for use in manufacture of or as part of footwear insoles,
`headwear, visors and brims, backing for luggage, golf bags, briefcases,
`
`
`handbags, leather goods and belts;sheeinselematerialbacking forbelts,
`visers, brims, and-size bands-in-hats-and head wear,and backing forluggage,
`’
`y
`
`’
`
`Class 18 -- Artificial leather in the form of sheets and/or roll for use in
`manufacture, and especially for use in the manufacture of bags, trunks, travelling
`bags, luggage, golf bags, briefcases, handbags, leather goods and belts
`
`Class 25 -- Shoe insoles; sheeinsele_material backing for belts_visers_brims—and
`
`
`
`In short, complete abandonmentof the application is a draconian over-reach, and the
`abandonmentshould belimited, if at all to the goods shown as deleted above; and the
`application should be reinstated and allowed to proceedfor the remaining goods.
`
`

`

`

`

`Applicant: Stanco USA Inc.
`
`Serial No.: 90/165084
`
`Filed: September 8, 2020
`
`Mark: BONTEX
`
`PETITION TO REVIVE APPLICATION PURSUANT TO 37 C.EF.R. 2.146
`
`Applicant hereby petitions to revive the above application or, in the alternative, to revise
`the full abandonmentto a “partial abandonment”of the application to simply delete
`“shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods”in Class 17.
`
`FACTS
`
`On February 15, 2022, the Examining Attorney issued a “non-final” Office Action
`objecting to the identification of goods. Specifically, the Examining Attorney objected to
`“shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods”in Class 25.
`
`Applicant timely filed a Response on March 17, 2022, in which it amended the
`identification of goods as follows:
`
`Class 17 -- Impregnated cellulose fiber web product in sheet and/orroll form resembling
`leather for use in manufacture of or as part of footwear insoles, headwear, visors and
`brims, backing for luggage, golf bags, briefcases, handbags, leather goods and belts;
`shoe insole material, backing for belts, visors, brims, and size bands in hats and
`head wear, and backing for luggage, golf bags, briefcases, handbags, leather
`goods
`
`Class 18 -- Artificial leather in the form of sheets and/orroll for use in manufacture, and
`especially for use in the manufacture of bags, trunks, travelling bags, luggage, golf
`bags, briefcases, handbags, leather goods and belts
`
`W
`
`Class 25 -- Shoe insoles;sheeinsolematerial ktagtorbelts visers_brms_ane size
`
`
`
`HO
`
`
`
`
`In so amending the application, Applicant noted —
`
`

`

`The Examining Attorney has objected to the goods "shoe insole material, backing for belts,
`visors, brims, and size bands in hats and head wear, and impregnated cellulose fiber web
`productin sheet and/orroll form for use the manufacture thereof" currently in Class 25 as being
`similar to "Impregnated cellulose fiber web product in sheet and/or roll form resembling leather
`for use in manufacture of or as part of footwear insoles, headwear, visors and brims, backing for
`luggage, golf bags, briefcases, handbags, leather goods and belts"identified in Class 17. The
`fact that they are "similar" should not be controlling as goods sometimescanfall into multiple
`classes. In any case, Applicant has deleted "shoe insole material, backing for belts, visors,
`brims, and size bands in hats and head wear" from Class 25, and moved these goods to Class
`17, without the preamble "Impregnated cellulose fiber web product in sheet and/or roll form
`resembling leather for use in manufacture of or as part of .". Applicant submits that the objection
`to the Class 25 identification and classification is now resolved, that the transfer of "shoe insole
`material, backing for belts, visors, brims, and size bands in hats and head wear"to Class 17 is
`appropriate, and that the application should now bein condition for acceptance.
`
`The Examining Attorney then issued the April 4, 2022 Office Action abandoning the
`application because —
`
`‘In this case, applicant did not submit a properly signed response that addressesall the issues
`raised in the outstanding Office action by the deadline stated in action by the deadline stated.
`The identification of goods in Class 17 remains unacceptable and the nature of the last item, i.e.
`shoeinsole material, backing for belts, visors, brims, and size bands in hats and head wear, and
`backing for luggage, golf bags, briefcases, handbags, leather goods, is not clear”.
`
`Applicant submits that the March 17, 2022 Responsedid addressall of the issues
`raised by the Examiner — (1) Applicant deleted the Class 25 good to which the
`Examining Attorney objected and (2) moved those goods to Class 17 with the preamble.
`In objecting to this amendmentin the April 4 Office Action abandoning the application,
`the Examiner forthe first time stated “The identification of goods in Class 17 remains
`unacceptable and the nature of the last item, |.e. shoe insole material, backing for belts,
`visors, brims, and size bandsin hats and head wear, and backing for luggage, golf
`bags, briefcases, handbags, leather goods, is not clear”.+
`
`ARGUMENT
`
`Applicantfirst submits thatit fully responded to the February 15, 2022 Office Action in
`its March 17, 2022 Response, and that it is improper and unfair for the Examining
`Attorney to abandon the goods movedfrom Class 25 to Class 17 as being “unclear”,
`when the only previous objection to these goods wasthat they were improperly
`classified in Class 25.
`
`1 In a previous Office Action, the Examining Attorney objected to the noted Class 25 goods
`(moved to Class 17) simply because “The bolded wording is similar to goods in Class 17 and if
`so, they should be deleted”; not becausethis identification “... is unclear”.
`
`

`

`In any case, Trademark Rule 2.65(a)(1), 37 C.F.R. §2.65(a)(1), provides thatif all
`refusals and/or requirements are expressly limited to certain goods/services, and the
`applicant fails to respond, or to respond completely, to an Office action, the application
`will be abandonedonly as to those particular goods/services. Here, the Office Action
`clearly stated that the refusal applied only to the asserted incorrectly classified goods in
`Class 25 -- “shoe insole material, backing for belts, visors, brims, and size bands
`in hats and head wear, and backing for luggage, golf bags, briefcases, handbags,
`leather goods”.
`
`Section 718.02(a) of the Trademark Manual of Examining Procedure provides as
`follows:
`
`Incomplete Response to Partial Refusal or Requirement. Partial abandonment mayalso occur
`when an applicantfails to file a complete responseto a final refusal or final requirement that is
`expressly limited to only certain goods/services/class(es).
`If an applicant files an incomplete
`response to a nonfinal action that is limited to only certain goods/services/class(es), the
`examining attorney should generally issue an action making all outstanding requirements and
`refusals final rather than partially abandoning the application. See TMEP §8718.03—718.03(b)
`regarding incomplete responses. When an examining attorney holds an application abandoned
`for failure to file a complete response, the applicant’s recourseis to file a petition to the Director
`under 37 C.F.R. §2.146 to reverse the holding. See TMEP §1713.01. If an applicantfiles an
`incomplete responseto a final action thatis limited to only certain goods/services/class(es) and
`there is time remaining in the responseperiod tofile a notice of appeal, the examining attorney
`musttreat it as a request for reconsideration and deny the request, but must wait to issue the
`partial abandonmentuntil all time to respond has expired. If there is no time remaining to appeal,
`the examining attorney must issue an examiner’s amendmentdeleting (abandoning) the
`goods/services/classes to which the refusal or requirement pertained. The examiner’s amendment
`must clearly set forth the changes that will be madeto the identification of goods/services. No
`prior authorization from the applicant or its attorney is needed to issue an examiner’s amendment
`in this situation.
`
`Failure to Respond to Partial Refusal or Requirement. When an applicantfails to respond to a
`refusal or requirementthat is expressly limited to only certain goods/services/class(es), the
`examining attorney should issue an examiner’s amendmentdeleting (abandoning) the
`goods/services/classes to which the refusal or requirement pertained. The examiner’s
`amendment should clearly set forth the changes that will be madeto the identification of
`goods/services in the application. No prior authorization from the applicant or the applicant’s
`
`qualified practitioner is needed to issue an examiner’s amendmentin this situation. TMEP
`8707.02.
`If the failure to respond to the partial refusal or requirement was unintentional, the
`applicant may file a petition to the Director to revive the deleted goods/services/classes within
`two monthsofthe issuance date of the examiner’s amendment. When seekingto revive a
`portion of an application that was partially abandoned, the applicant must use the TEASPetition
`to the Director under Trademark Rule 2.146 form. See TMEP §301 regarding the requirement to
`file electronically and §§81714-1714.01(g) regarding petitions to revive.
`
`

`

`The Examining Attorney contendsthat by not resolving the issue regarding the goods in
`question -- “shoe insole material, backing for belts, visors, brims, and size bands
`in hats and head wear, and backing for luggage, golf bags, briefcases, handbags,
`leather goods” — “... applicant did not submit a properly signed response that
`addressesall the issuesraised in the outstanding Office action by the deadline stated in
`action by the deadline stated.” In fact, the title of the April 4, 2022 Office Action
`acknowledgesthis contention —
`
`IMPORTANT NOTICE: APPLICATION IS ABANDONED
`
`Applicant’s Response Is Incomplete
`
`Accordingly, in view of the foregoing, at worst the application should have been only
`partially abandoned by deleting the goods in question “shoe insole material, backing
`for belts, visors, brims, and size bands in hats and head wear, and backing for
`luggage, golf bags, briefcases, handbags, leather goods” and accepting the
`application and allowing it to proceed for the remaining goods —
`
`Class 17 -- Impregnated cellulose fiber web product in sheet and/or roll form
`resembling leather for use in manufacture of or as part of footwear insoles,
`headwear, visors and brims, ba