TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

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PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 78861122 has been amended as follows:

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

The sole basis for the refusal to register the mark is based upon the existence of Registration No. 3,051,906 for "FRED'S" covering a variety of goods including soft drinks in International Class 32.  Upon conducting an investigation, Applicant has discovered, on information and belief, that the Registrant is not using the registered mark for any beverages classifiable in International Class 32.  Accordingly, today, Applicant is filing a Petition to Cancel Registration No. 3,051,906 for the goods in International Class 32.  Accordingly, when the Examining Attorney reviews this Request for Reconsideration and confirms the filing of the Petition to Cancel, it is respectfully requested that the Examining Attorney suspend the prosecution of this application pending the outcome of the Cancellation Proceeding. 

Additionally, today, Applicant is filing via Certificate of Mailing procedure a Request to Divide (Requests to Divide may not be filed online).  Applicant's Attorney recently discovered that certain ones of the goods claimed in the application were made the subject of an Amendment to Allege Use where the mark has not yet actually been used on those goods in interstate commerce.  This error was inadvertent.  In the Request to Divide, the drinking waters in International Class 32 have been retained in this application and the mark is actually in use in interstate commerce on those goods.  The remaining goods are the subject of the Request to Divide and the new application to be created for coverage of those goods will be based upon a bona fide intent to use the mark. 

In order to preserve Applicant's rights, both in this application and the new application that is the subject of the Request to Divide, Notices of Appeal have been filed in both applications.  As such, it is respectfully requested that the Examining Attorney suspend the prosecution of the application created as a result of the Request to Divide, pending the outcome of the Cancellation Proceeding. 

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /H. Jay Spiegel/     Date: 11/13/2007
Signatory's Name: H. Jay Spiegel
Signatory's Position: Applicant's Attorney

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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 78861122
Internet Transmission Date: Tue Nov 13 15:25:04 EST 2007
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.X-2007111315250485
7284-78861122-410a9da69bbd0dadec48478118
4b6e35cf-N/A-N/A-20071113151052000065