Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85467315 CAN DO(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85467315) has been amended as follows:

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

REMARKS:

          The Office Action favorably comments that the Examining Attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  The Office Action, however, presents the following technical points: 1) a claim of ownership of Applicant’s US Registration No. 4,094,742 for the mark CAN ART is requested; and 2) the identification of services is considered indefinite and, thus, clarification is requested.  In response, Applicant amends herein the application to add the claim of ownership as kindly suggested by the Examining Attorney.  In addition, Applicant has amended the identification of services generally as also kindly suggested, with couple of exceptions.  In regards to Class 35, Applicant does not promote sports competitions per se and thus has deleted the term sports and replaced it with a term exhibitions.  Applicant has also deleted the phrase “filled with non-perishable food”.  Additionally, regards to the identification of services in Class 43, Applicant has deleted the suggested phrase “to needy persons” in view of Applicant’s other U.S. registrations that did not require this phrase and further in view of the fact that the provision of food is not necessarily to needy persons but typically to food banks or other similar types of organizations.  Lastly, Applicant includes herewith payment for the filing fee for the added class.

Respectfully submitted,

By: /Todd Deveau/

Todd Deveau, Reg. No. 29,526

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment in the nature of competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable food; arranging, conducting and promoting competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable food
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: Entertainment in the nature of competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable food; Entertainment in the nature of competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, arranging and conducting competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and/or bottles; arranging, conducting and promoting competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable foodClass 041 for Entertainment in the nature of competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, arranging and conducting competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and/or bottles
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Charitable services, namely, providing food, gathered through competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable food and promoting the same
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: Charitable services, namely, providing food, gathered through competitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and bottles, filled with non-perishable food and promoting the same; Charitable services, namely, providing food, gathered through competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and/or bottlesClass 043 for Charitable services, namely, providing food, gathered through competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and/or bottles
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Promoting competitions, exhibitions and events of others namely competitions, exhibitions and special events in which structures are designed and built entirely of containers, including cans, boxes, bags, and/or bottles
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.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 4094742.


FEE(S)
Fee(s) in the amount of $325 is being submitted.

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: /Todd Deveau/      Date: 07/11/2012
Signatory's Name: Todd Deveau
Signatory's Position: Attorney of Record, Member of GA Bar
Signatory's Phone Number: 770-933-9500


Response Signature
Signature: /Todd Deveau/     Date: 07/11/2012
Signatory's Name: Todd Deveau
Signatory's Position: Attorney of Record, Member of GA Bar

Signatory's Phone Number: 770-933-9500

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.

        
RAM Sale Number: 1891
RAM Accounting Date: 07/12/2012
        
Serial Number: 85467315
Internet Transmission Date: Wed Jul 11 15:17:10 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201207111517100
85140-85467315-4902f12d1cfc8fb21c49bedb9
b4ec1bb033-CC-1891-20120711151332512543