Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77795014 has been amended as follows:

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

Applicant respectfully disagrees that its KINDER mark is in any way generic. To the contrary, the only way that a goat can be identified as KINDER is after registration with Applicant. Applicant maintains strict control over all uses of the KINDER mark. It bears noting that KINDER goats are of the Capra genus and domestic goat species; i.e. KINDER neither describes the genus nor the species here. Examiner is directed to Registration No. 3,318,318, where USPTO properly allowed registration of the SAKO mark in International Class 031 for Cross breed of live goats and International Class 044 for Breeding services for goats. There is no way to reconcile USPTO's registration of the SAKO mark with examiner's denial here.

EVIDENCE
Evidence in the nature of 1) Written statement from Patricia Showalter, co-founder of Applicant, regarding Applicant's maintenance of strict industry controls on use the KINDER mark (1 page); 2) Cease and desist letter from Applicant's attorney to rogue breeder attempting to use the KINDER mark without permission from Applicant (2 pages). has been attached.
Original PDF file:
evi_1-7089155235-222911347_._KINDER_evidence_re_response_to_office_action.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Live animals, namely, 50% pygmy and 50% nubian cross breed of goat
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/30/1988 and first used in commerce at least as early as 05/30/1988, and is now in use in such commerce.

Proposed: Class 031 for Live animals, namely, 50% pygmy and 50% nubian cross breed of goat
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/30/1988 and first used in commerce at least as early as 05/30/1988, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 031. The specimen(s) submitted consists of website home page for breed registry.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU0-7089155235-222911347_._Website_specimen.pdf
Converted PDF file(s) (1 page)
Specimen File1

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LARRY S. SPOKOINY
LOMBINO MARTINO, P.S.
1119 PACIFIC AVE STE 900
TACOMA, WA 98402-4323

Proposed:
Larry S. Spokoiny of Lombino Martino, P.S., having an address of
10009 59th Avenue SW Lakewood, Washington 98499
United States
Larry.Spokoiny@lombinomartino.com
253-830-2820
253-830-2696
The attorney docket/reference number is 417307.



ADDITIONAL STATEMENTS
In response to the previous office action of 11/5/2009, Applicant added a claim of acquired distinctiveness/secondary meaning under Section 2(f) to overcome examiner's assertion that the mark was merely descriptive, and accordingly submitted evidence showing that the KINDER mark was and has always been exclusively associated with Applicant within the goat breeder industry. To the extent that examiner is now asserting that Applicant's mark is generic, Applicant hereby withdraws its Section 2(f) claim.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Larry Spokoiny/      Date: 11/25/2010
Signatory's Name: Larry S. Spokoiny
Signatory's Position: Attorney of record, Washington bar member

Response Signature
Signature: /Larry Spokoiny/     Date: 11/25/2010
Signatory's Name: Larry S. Spokoiny
Signatory's Position: Attorney of record, Washington bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Larry S. Spokoiny
   Lombino Martino, P.S.
   10009 59th Avenue SW
   Lakewood, Washington 98499
        
Serial Number: 77795014
Internet Transmission Date: Thu Nov 25 23:50:59 EST 2010
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2010112523505900
0208-77795014-4702ba37367f2de7c0eacd2cb1
d185b828-N/A-N/A-20101125222911347930