TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85367937 BLACK MAGIC(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85367937) has been amended as follows:

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

As submitted herewith, Applicant has limited its goods and services to solely that of "hookah tobacco, molasses tobacco." Applicant submits that this amendment places its trademark application in condition for registration. In particular, such an amendment limits the goods and services to products that are wholly unrelated to cigars AND cigarettes - the subject of the cases that are cited in the Examiner's support. Indeed, it is noted that cigars and cigarettes utilize rolled tobacco - e.g. tobacco from a part of the world where the tobacco is dried and rolled into shape - in order to be smoked. In complete contrast, hookah tobacco is found in totally distinct parts of the world, including the Middle East. Such tobacco is not rolled; rather, it is packaged in molasses, and shipped and sold in completely different packaging and intents. In short, no one who uses or manufactures tobacco would confuse the two. Applicant suggests that this amendment places the mark in condition for registration. Should the Examiner believe a discussion would be beneficial, a phone call is welcomed.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Hookah tobacco; Molasses tobacco; Smoking tobacco
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Hookah tobacco; Molasses tobacco; Smoking tobaccoClass 034 for Hookah tobacco; Molasses tobacco
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /David Oskin/     Date: 11/15/2012
Signatory's Name: David Oskin
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312.890.2527

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 not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 85367937
Internet Transmission Date: Thu Nov 15 21:40:53 EST 2012
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-201211152140530
46183-85367937-490f26325ab2b38ac9411f22a
ec561dc-N/A-N/A-20121115210718670589