| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76604067 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 78/166571 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
REMARKS
The instant application was suspended on August 31, 2005. The basis of the suspension is threefold: Cancellation No. 92044616, filed by applicant herein against Registration No. 2696943; and two prior-filed co-pending applications, Serial No. 78/166571 for the mark PURITY BABY FOODS and Serial No. 78/189657 for PURITY, both in the name of Tiger Food Brands Intellectual Property Holding Company (Proprietary) Limited. The Examining Attorney is advised that since the time the suspension in the instant application was issued, applicant herein lodged Opposition No. 91168145 against Serial No. 78/166571, which opposition was settled following a restrictive amendment to identification of goods in that case. The goods in Serial No. 78/166571 now read: “Vegetable and fruit purees or liquidized baby foods; 1st, 2nd, and 3rd stage baby foods; baby cereals; organic fruits and vegetables for babies, all of which are targeted to consumers of two years of age or younger.” The opposition was dismissed after the limiting amendment to the identification of goods had been entered, since the goods have been clearly differentiated from applicant’s goods herein, namely, “organic food products containing spelt, namely, pastas, pretzels, cookies, grain-based snacks, namely, pretzels, sesame and rice sticks and flat chips.” Applicant submits that Application Serial No. 78/166571 should not serve to bar publication of the instant case. The Examining Attorney is advised that Application Serial No. 78/189657 stands abandoned as of June 12, 2006, as evidenced by the records of the U.S. Trademark Office. Finally, the Examining Attorney is advised that Cancellation No. 92044616 was dismissed by the Trademark Trial and Appeal Board on March 17, 2008 in view of registrant’s Voluntary Surrender Under Section 7(e) of Registration No. 2696943. A copy of the Board Order dated March 17, 2008 is attached. In view of the foregoing, applicant respectfully submits that the instant application is now condition for publication. Applicant requests the removal of the suspension so that the instant application can proceed to publication at the earliest possible date. If further information is required, the Examining Attorney is encouraged to contact undersigned counsel by telephone to facilitate the prompt prosecution of this case. |
|
| ARGUMENT FILE NAME(S) | |
| ORIGINAL PDF FILE | PE_12411614-113647084_._800918_dismiss.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT15\766\040\76604067\xml1\RSI0002.JPG |
| The referenced serial number(s) 78/189657 and Registration No. 2696943 has/have now abandoned. The applicant hereby requests removal of this application from suspension for further consideration by the examining attorney. | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kevin G. Smith/ |
| SIGNATORY'S NAME | Kevin G. Smith |
| SIGNATORY'S POSITION | Attorney of Record for Applicant |
| DATE SIGNED | 03/27/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Mar 27 11:45:02 EDT 2008 |
| TEAS STAMP | USPTO/RSI-XX.X.XXX.XX-200 80327114502922297-7660406 7-420ead653fc8b5bb3d2f6da e735f1996e8-N/A-N/A-20080 327113647084289 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
REMARKS
The instant application was suspended on August 31, 2005. The basis of the suspension is threefold: Cancellation No. 92044616, filed by applicant herein against Registration No. 2696943; and two prior-filed co-pending applications, Serial No. 78/166571 for the mark PURITY BABY FOODS and Serial No. 78/189657 for PURITY, both in the name of Tiger Food Brands Intellectual Property Holding Company (Proprietary) Limited.
The Examining Attorney is advised that since the time the suspension in the instant application was issued, applicant herein lodged Opposition No. 91168145 against Serial No. 78/166571, which opposition was settled following a restrictive amendment to identification of goods in that case. The goods in Serial No. 78/166571 now read: “Vegetable and fruit purees or liquidized baby foods; 1st, 2nd, and 3rd stage baby foods; baby cereals; organic fruits and vegetables for babies, all of which are targeted to consumers of two years of age or younger.” The opposition was dismissed after the limiting amendment to the identification of goods had been entered, since the goods have been clearly differentiated from applicant’s goods herein, namely, “organic food products containing spelt, namely, pastas, pretzels, cookies, grain-based snacks, namely, pretzels, sesame and rice sticks and flat chips.” Applicant submits that Application Serial No. 78/166571 should not serve to bar publication of the instant case.
The Examining Attorney is advised that Application Serial No. 78/189657 stands abandoned as of June 12, 2006, as evidenced by the records of the U.S. Trademark Office.
Finally, the Examining Attorney is advised that Cancellation No. 92044616 was dismissed by the Trademark Trial and Appeal Board on March 17, 2008 in view of registrant’s Voluntary Surrender Under Section 7(e) of Registration No. 2696943. A copy of the Board Order dated March 17, 2008 is attached.
In view of the foregoing, applicant respectfully submits that the instant application is now condition for publication. Applicant requests the removal of the suspension so that the instant application can proceed to publication at the earliest possible date.
If further information is required, the Examining Attorney is encouraged to contact undersigned counsel by telephone to facilitate the prompt prosecution of this case.
