Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76655586 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Remarks

Applicant has added a 1(b) filing basis to its application and has maintained its 44(d) filing basis.  Applicant has adopted the disclaimer of the term “VODKA” as required by the Examiner and has added a statement that the mark is not in color along with a description of the mark. 

Applicant has also executed the signature date verification as required by the Examiner.

The Examiner indicated that the Applicant must submit a copy of its foreign registration to satisfy the requirement of Trademark Act Section 44(e).  Applicant respectfully points out that the application was filed under Section 44(d) and by this amendment is both a 44(d) and 1(b) application.  Applicant's priority application has not yet matured into registration.  Upon such registration, Applicant will provide a copy to the USPTO.

The Examiner is invited to telephone the undersigned if further questions regarding the application remain.

The Commissioner is hereby authorized to charge any fees under 37 C.F.R. 2.6 which may be required by this paper, or to credit any overpayment to Deposit Account No. 50-1287. 

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 033 for Alcoholic beverages being vodka
Original Filing Basis: 44(d).
Proposed: Class 033 for Alcoholic beverages being vodka
Filing Basis: 1(b); and 44(d).
New/Additional Basis:

Section 1(b), the applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [New Zealand application number 738668 filed 11/14/2005]. 15 U.S.C.Section 1126(d), as amended.

Additional Statements

"No claim is made to the exclusive right to use VODKA apart from the mark as shown."

"The mark consists of the words "downunder" and "vodka" and a design representing a boomerang."

The mark is not in color.

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /bert smith/      Date: 10/20/2006
Signatory's Name: Bert Smith
Signatory's Position: President

Response Signature
Signature: /Matthew R. Jenkins rl/     Date: 10/20/2006
Signatory's Name: Matthew R. Jenkins
Signatory's Position: Attorney
        
Serial Number: 76655586
Internet Transmission Date: Fri Oct 20 07:41:42 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006102007414256
6365-76655586-340c332f7f39b9f12783a37ce7
2df8e41d5-N/A-N/A-20061020070004701302