Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 85661190 SWISSE (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85661190) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 030 for Processed foods containing herbs, vitamins and minerals in the form of powder, tablet, liquid or capsule

Applicant hereby deletes the following class of goods/services from the application.
Class 040 for Food preparations in this class containing nutritional and dietary supplements, in crystalline, granular, and solid bar and powder form

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Skin care preparations; cosmetics; soaps; creams and lotions for cosmetic purposes; perfumery; cosmetic kits, cosmetic dyes; hair lotions, pomades, shampoos and hair care products; dentifrices; shaving preparations; after-shave lotions; toiletries; deodorants for personal use; astringents for cosmetic purposes; scented and aromatic waters for personal use; perfumes and eau de cologne; greases and petroleum jellies for cosmetic purposes; make-up and makeup preparations of all types; bath salts not for medical purposes and cosmetic preparations for baths; depilatories; beauty and cleansing facial masks; cosmetic skin cleansers and toners; essential oils for cosmetic purposes; skin support supplements containing a combination of one or more vitamins, herbs and minerals
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: Skin care preparations; cosmetics; soaps; creams and lotions for cosmetic purposes; perfumery; cosmetic kits, cosmetic dyes; hair dyes; hair lotions, pomades, shampoos and hair care products; dentifrices; shaving preparations; after-shave lotions; toiletries; non-medicated toiletries; deodorants for personal use; astringents for cosmetic purposes; scented and aromatic waters for personal use; perfumes and eau de cologne; greases and petroleum jellies for cosmetic purposes; make-up and makeup preparations of all types; bath salts not for medical purposes and cosmetic preparations for baths; depilatories; beauty and cleansing facial masks; cosmetic skin cleansers and toners; essential oils for cosmetic purposes; skin support supplements containing a combination of one or more vitamins, herbs and minerals; skin support supplements, namely skin cream containing a combination of one or more vitamins, herbs and mineralsClass 003 for Skin care preparations; cosmetics; soaps; creams and lotions for cosmetic purposes; perfumery; hair dyes; hair lotions, pomades, shampoos and hair care products; dentifrices; shaving preparations; after-shave lotions; non-medicated toiletries; deodorants for personal use; astringents for cosmetic purposes; scented and aromatic waters for personal use; perfumes and eau de cologne; greases and petroleum jellies for cosmetic purposes; make-up and makeup preparations of all types; bath salts not for medical purposes and cosmetic preparations for baths; depilatories; beauty and cleansing facial masks; cosmetic skin cleansers and toners; essential oils for cosmetic purposes; skin support supplements, namely skin cream containing a combination of one or more vitamins, herbs and minerals
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 005 for Medicated sun screen and sun block preparations, herbal remedies and unguents; yeast and preparations containing yeast for medicinal purposes; tinctures and oils for medicinal purposes; preparations of trace elements, vitamins, vitamin preparations, tonics, and pharmaceutical preparations for medicinal purposes; antiseptics and disinfectants; herbs and products containing herbs and herbal extracts for medicinal purposes; liniments, creams and lotions for medicinal purposes; plant products and plant extracts for medicinal purposes; salts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes; lozenges for medicinal purposes; mineral food supplements; dietetic substances adapted for medical use; essential and all other oils for medicinal purposes; medicated confectionery and candy for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes; materials for dressing; sanitary preparations; herbal formulations, mineral supplements and nutritive elements including vitamins, minerals, nutritive elements and herbal formulations in capsule, tablet and liquid form; dietetic substances for medical use; analgesics; medicinal drinks including teas; nutrient supplements including ginseng, anti-oxidants, co-enzyme Q10, evening primrose oil; biocides, antiseptics; none of the aforesaid goods being cleaning agents
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: Medicated sun screen and sun block preparations, herbal remedies and unguents; Medicated sun screen and sun block preparations, herbal remedies, namely, herbal supplements and medicinal herbal preparations; yeast and preparations containing yeast for medicinal purposes; tinctures and oils for medicinal purposes; preparations of trace elements, vitamins, vitamin preparations, tonics, and pharmaceutical preparations for medicinal purposes; preparations of trace elements for human use, namely dietary supplements, vitamins, vitamin preparations; tonics, namely cough syrup, and pharmaceutical preparations for vitamin and mineral deficiency; antiseptics and disinfectants; herbs and products containing herbs and herbal extracts for medicinal purposes; liniments, creams and lotions for medicinal purposes; plant products and plant extracts for medicinal purposes; salts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes; lozenges for medicinal purposes; mineral food supplements; dietetic substances adapted for medical use; essential and all other oils for medicinal purposes; medicated confectionery and candy for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes; materials for dressing; sanitary preparations; herbal formulations, mineral supplements and nutritive elements including vitamins, minerals, nutritive elements and herbal formulations in capsule, tablet and liquid form; dietetic substances for medical use; analgesics; medicinal drinks including teas; nutrient supplements including ginseng, anti-oxidants, co-enzyme Q10, evening primrose oil; biocides, antiseptics; none of the aforesaid goods being cleaning agentsClass 005 for Medicated sun screen and sun block preparations, herbal remedies, namely, herbal supplements and medicinal herbal preparations; yeast and preparations containing yeast for medicinal purposes; tinctures and oils for medicinal purposes; preparations of trace elements for human use, namely dietary supplements, vitamins, vitamin preparations; tonics, namely cough syrup, and pharmaceutical preparations for vitamin and mineral deficiency; antiseptics and disinfectants; herbs and products containing herbs and herbal extracts for medicinal purposes; liniments, creams and lotions for medicinal purposes; plant products and plant extracts for medicinal purposes; salts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes; lozenges for medicinal purposes; mineral food supplements; dietetic substances adapted for medical use; essential and all other oils for medicinal purposes; medicated confectionery and candy for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes; materials for dressing; sanitary preparations; herbal formulations, mineral supplements and nutritive elements including vitamins, minerals, nutritive elements and herbal formulations in capsule, tablet and liquid form; dietetic substances for medical use; analgesics; medicinal drinks including teas; nutrient supplements including ginseng, anti-oxidants, co-enzyme Q10, evening primrose oil; biocides, antiseptics; none of the aforesaid goods being cleaning agents
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 029 for Processed foods containing essential fatty acids, vitamins and minerals in the form of powder, tablet, liquid or capsule
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: Processed foods containing essential fatty acids, vitamins and minerals in the form of powder, tablet, liquid or capsule; Processed foods, namely frozen and dried fruits and vegetables containing herbs, vitamins and minerals; meal replacement bars for boosting energyClass 029 for Processed foods, namely frozen and dried fruits and vegetables containing herbs, vitamins and minerals; meal replacement bars for boosting energy
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 041 for Educational and entertainment services provided via all forms of electronic transmission; publishing; electronic publishing; organisation of competitions for education and/or entertainment; information services (including on-line information services) relating to health, personal care; and education; publication of information on the Internet; arranging and conducting educational and health seminars and workshops; arranging and conducting health education services; arranging and conducting of medical conferences and seminars; health club services; medical teaching services; production of radio, television, film and videos relating to health and personal care
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: Educational and entertainment services provided via all forms of electronic transmission; Educational and entertainment services provided via all forms of electronic transmission, namely electronic publications featuring news and commentary in the field of nutrition, health and wellness; publishing; electronic publishing; organisation of competitions for education and/or entertainment; organization of competitions for education and/or entertainment; information services (including on-line information services) relating to health, personal care; educational information services and on-line information services, namely offering classes relating to health, personal care; and education; arranging and conducting educational and health seminars and workshops; publication of information on the Internet; arranging and conducting health education services; arranging and conducting of medical conferences and seminars; health club services; medical teaching services; production of radio, television, film and videos relating to health and personal careClass 041 for Educational and entertainment services provided via all forms of electronic transmission, namely electronic publications featuring news and commentary in the field of nutrition, health and wellness; publishing; electronic publishing; organization of competitions for education and/or entertainment; educational information services and on-line information services, namely offering classes relating to health, personal care; arranging and conducting educational and health seminars and workshops; arranging and conducting health education services; arranging and conducting of medical conferences and seminars; health club services; medical teaching services; production of radio, television, film and videos relating to health and personal care
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 submits one(or more) specimen(s) for Class 041 .

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Assistance provided to researchers: medical research; retailing and wholesaling services relating to the sale of pharmaceutical, medicinal and sanitary preparations including vitamin and mineral preparations, vitamin, mineral and food supplements; medical, hygienic and beauty care services including services provided by naturopaths, homoeopaths and herbalists; and medical, scientific and chemical research and analysis; medical clinics; professional medical consultancy (non-business); cosmetic research; health care services; and pharmacies
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: Assistance provided to researchers: medical research; Assistance provided to researchers, namely compiling research data, statistical analysis and reporting services, and reviewing research protocols; retailing and wholesaling services relating to the sale of pharmaceutical, medicinal and sanitary preparations including vitamin and mineral preparations, vitamin, mineral and food supplements; medical research; medical, hygienic and beauty care services including services provided by naturopaths, homoeopaths and herbalists; scientific and chemical research and analysis; and medical, scientific and chemical research and analysis; cosmetic research; medical clinics; professional medical consultancy (non-business); health care services; and pharmaciesClass 042 for Assistance provided to researchers, namely compiling research data, statistical analysis and reporting services, and reviewing research protocols; medical research; scientific and chemical research and analysis; cosmetic research
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 submits one(or more) specimen(s) for Class 042 .

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 030 ) for Retail store and wholesale store services in the field of vitamin and mineral preparations, vitamin, mineral and food supplements; and retail pharmacies
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 044 for Medical, hygienic and beauty care services, namely services provided by naturopaths, homeopaths and herbalists; medical clinics; non-business professional medical consultancy; health care services
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.


I hereby elect to by-pass any fee edit for an added class(es), because I believe the original fee payment was sufficient. I understand that the examining attorney could still, upon later review, require a fee payment.
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: /Oscar L. Alcantara/      Date: 11/26/2012
Signatory's Name: Oscar L. Alcantara
Signatory's Position: Attorney of record

Response Signature
Signature: /Oscar L. Alcantara/     Date: 11/26/2012
Signatory's Name: Oscar L. Alcantara
Signatory's Position: Attorney of record

Signatory's Phone Number: 312.201.3977

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.

        
Serial Number: 85661190
Internet Transmission Date: Mon Nov 26 16:39:05 EST 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2012112616390571
0506-85661190-490b3731b6e84851a52bec169d
954d2616-N/A-N/A-20121126131642006895