Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79229186 LAVAZZA (Stylized and/or with Design, see http://uspto.report/TM/79229186/mark.png) has been amended as follows:

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

In response to the Section 2(e)(4) surname refusal, applicant herein submits a Section 2(f) claim of acquired distinctiveness. Accordingly, applicant respectfully requests that the examiner withdraw the surname refusal and approve the application for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Electric machines for preparing coffee, infusions and other hot beverages; beverage cooling apparatus; kettles, electric; coffee machines, electric; coffee percolators, electric
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Electric machines for preparing coffee, infusions and other hot beverages; Electric machines for preparing coffee, infusions and other hot beverages, namely, electric coffee machines; beverage cooling apparatus; kettles, electric; coffee machines, electric; coffee percolators, electricClass 011 for Electric machines for preparing coffee, infusions and other hot beverages, namely, electric coffee machines; beverage cooling apparatus; kettles, electric; coffee machines, electric; coffee percolators, electric

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Coffee; vinegar; coffee flavorings; seasonings; cereal bars; coffee-based beverages; cocoa-based beverages; tea-based beverages; cookies; cocoa; cinnamon spice; caramels candy; chocolate; condiments; confectionery; natural sweeteners; edible ices; fruit jellies confectionery; chewing gum; honey; husked barley; bread; pasta; pastries; vegetal preparations for use as coffee substitutes; rice; sauces condiments; spices; artificial coffee; tea; tarts; sugar
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Coffee; vinegar; coffee flavorings; coffee flavorings for culinary purposes; seasonings; cereal bars; coffee-based beverages; cocoa-based beverages; tea-based beverages; cookies; cocoa; cinnamon spice; spice, namely, cinnamon; caramels candy; candy, namely, caramels; chocolate; condiments; confectionery, namely, pastilles; confectionery; natural sweeteners; edible ices; fruit jellies being confectionery, namely, fruit jelly candy; fruit jellies confectionery; chewing gum; honey; husked barley; bread; pasta; pastries; vegetal preparations for use as coffee substitutes; rice; condiments, namely, sauces; sauces condiments; spices; artificial coffee; tea; tarts; sugarClass 030 for Coffee; vinegar; coffee flavorings for culinary purposes; seasonings; cereal bars; coffee-based beverages; cocoa-based beverages; tea-based beverages; cookies; cocoa; spice, namely, cinnamon; candy, namely, caramels; chocolate; confectionery, namely, pastilles; natural sweeteners; edible ices; fruit jellies being confectionery, namely, fruit jelly candy; chewing gum; honey; husked barley; bread; pasta; pastries; vegetal preparations for use as coffee substitutes; rice; condiments, namely, sauces; spices; artificial coffee; tea; tarts; sugar

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Accommodation bureau services hotels, boarding houses; cafés; cafeteria services; retirement home services; tourist home services; providing campground facilities; rental of temporary accommodation; canteen services; rental of cooking apparatus; rental of meeting rooms; rental of chairs, tables, table linen, glassware; boarding house services; boarding for animals; hotel reservations; temporary accommodation reservations; boarding house bookings; restaurant services; self-service restaurant services; hotel services; bar services; holiday camp services lodging; food and drink catering; motel services; snack-bar services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Accommodation bureau services hotels, boarding houses; Accommodation bureau services for hotels and boarding houses, namely, booking of temporary accommodation; cafés; cafeteria services; retirement home services; tourist home services; providing campground facilities; rental of temporary accommodation; canteen services; rental of cooking apparatus; rental of meeting rooms; rental of chairs, tables, table linen, glassware; boarding house services; boarding for animals; hotel reservations; hotel reservations, namely, making hotel reservations for others; temporary accommodation reservations; boarding house bookings; restaurant services; self-service restaurant services; hotel services; bar services; holiday camp services lodging; lodging, namely, holiday camp services; food and drink catering; motel services; snack-bar servicesClass 043 for Accommodation bureau services for hotels and boarding houses, namely, booking of temporary accommodation; cafés; cafeteria services; retirement home services; tourist home services; providing campground facilities; rental of temporary accommodation; canteen services; rental of cooking apparatus; rental of meeting rooms; rental of chairs, tables, table linen, glassware; boarding house services; boarding for animals; hotel reservations, namely, making hotel reservations for others; temporary accommodation reservations; boarding house bookings; restaurant services; self-service restaurant services; hotel services; bar services; lodging, namely, holiday camp services; food and drink catering; motel services; snack-bar services

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 1201336, 1681093, and 2236996


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: /Erica L. Tritt/      Date: 07/05/2018
Signatory's Name: Erica L. Tritt
Signatory's Position: Attorney of Record, Georgia Bar Member
Signatory's Phone Number: (404) 252-0900


Response Signature
Signature: /Erica L. Tritt/     Date: 07/05/2018
Signatory's Name: Erica L. Tritt
Signatory's Position: Attorney of Record, Georgia Bar Member

Signatory's Phone Number: (404) 252-0900

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
Serial Number: 79229186
Internet Transmission Date: Thu Jul 05 09:57:47 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20180705095747787
207-79229186-610d1285d5649426cf34df131cf
84ab701af54ef91cc47f5596cc42d9dcd64bc7-N
/A-N/A-20180705095057713788