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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
79229186 |
LAW OFFICE ASSIGNED |
LAW OFFICE 122 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/79229186/mark.png |
LITERAL ELEMENT |
LAVAZZA |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
ARGUMENT(S) |
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. |
GOODS AND/OR SERVICES SECTION (011)(current) |
INTERNATIONAL CLASS |
011 |
DESCRIPTION |
Electric machines for preparing coffee, infusions and other hot beverages; beverage cooling apparatus; kettles, electric; coffee
machines, electric; coffee percolators, electric |
GOODS AND/OR SERVICES SECTION (011)(proposed) |
INTERNATIONAL CLASS |
011 |
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, electric |
FINAL DESCRIPTION |
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 |
GOODS AND/OR SERVICES SECTION (030)(current) |
INTERNATIONAL CLASS |
030 |
DESCRIPTION |
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 |
GOODS AND/OR SERVICES SECTION (030)(proposed) |
INTERNATIONAL CLASS |
030 |
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; sugar |
FINAL DESCRIPTION |
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 |
GOODS AND/OR SERVICES SECTION (043)(current) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
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 |
GOODS AND/OR SERVICES SECTION (043)(proposed) |
INTERNATIONAL CLASS |
043 |
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 services |
FINAL DESCRIPTION |
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 |
ADDITIONAL STATEMENTS SECTION |
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 SECTION |
DECLARATION SIGNATURE |
/Erica L. Tritt/ |
SIGNATORY'S NAME |
Erica L. Tritt |
SIGNATORY'S POSITION |
Attorney of Record, Georgia Bar Member |
SIGNATORY'S PHONE NUMBER |
(404) 252-0900 |
DATE SIGNED |
07/05/2018 |
RESPONSE SIGNATURE |
/Erica L. Tritt/ |
SIGNATORY'S NAME |
Erica L. Tritt |
SIGNATORY'S POSITION |
Attorney of Record, Georgia Bar Member |
SIGNATORY'S PHONE NUMBER |
(404) 252-0900 |
DATE SIGNED |
07/05/2018 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Jul 05 09:57:47 EDT 2018 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XX-20
180705095747787207-792291
86-610d1285d5649426cf34df
131cf84ab701af54ef91cc47f
5596cc42d9dcd64bc7-N/A-N/
A-20180705095057713788 |
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