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. 85747306 SANIA(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85747306) has been amended as follows:

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

Earlier Filed Application

 

The Examiner has cited an earlier-filed Application No. 85678070 (the “cited Application”) as a potentially conflicting mark.  Applicant states that it initiated Opposition No. 91208853 (“Opposition”) to the cited Application on January 14, 2013.  The Opposition proceedings were concluded on July 31, 2013 by a TTAB decision in favor of the opposer. A copy of Board Decision is attached as Exhibit A for the Examiner's easy reference.

 

As stated in the Board Decision, the cited Application was officially abandoned as of July 31, 2013. A copy of the Notice of Abandonment is attached as Exhibit B.

 

Owing to the fact that the cited Application has been officially abandoned and the Opposition has been concluded, Applicant respectfully requests that the Examiner withdraw the objection based on the cited Application.

 

Identification of Goods

The Examiner has required an amendment to the Identification of Goods in Class 29 because it could include goods in other international classes. Applicant hereby amends its description of goods in Class 29 as follows: "Edible oils; edible fats; margarine; shortening; vegetable ghee being edible fats; vanaspati being edible fats; hydrogenated vegetable oils; prepared nuts; processed cashew kernels; processed peanuts; peanut butter; preserved fruit; raisins; tinned fruits; potato chips; preserved mushrooms; tofu; preserved beans; albumen for food; eggs; milk; milk beverages with milk predominating; milk products excluding ice cream, ice milk and frozen yogurt; cheese; yogurt; crustaceans, not live; shellfish, not live; fish, preserved; meat; poultry, not live; meat extracts; soups; fruit jellies; jams; cranberry sauce compote; jellies for food; preserved potato chips; dried and cooked fruits and vegetables; preserved onions; sardines; caviar and tomato puree".

Unsigned Application

The Examiner has advised that the application was not signed and verified, and must verify the statements specified in a signed affidavit or declaration. Applicant hereby submits a signed Declaration verifying the statements specified in the subject application.

Applicant has also corrected an unintended error in the corporate name of the Applicant

In the event that further prosecution is needed and can be accomplished via a telephone conference, the Examiner is encouraged to contact Applicant's attorney, David Sipiora, at 303.571.4000.

 

EVIDENCE
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Edible oils; edible fats; margarine; shortening; vegetable ghee (edible fats); vanaspati (edible fats); hydrogenated vegetable oils; nuts, prepared; cashew kernels, processed; peanuts, processed; peanut butter; fruit, preserved; raisins; fruits, tinned; salads; potato chips; preserved garden herbs (other than seasonings); mushrooms, preserved; tofu; beans, preserved; albumen for food; eggs; milk; milk beverages (milk predominating); milk products; cheese; yogurt; crustaceans (not live); shellfish (not live); food products made from fish; fish, preserved; meat; poultry, not live; meat extracts; soups; fruit jellies; jams; cranberry sauce (compote); jellies for food; potato chips, preserved: dried and cooked fruits and vegetables; onions (preserved); sardines; caviar and tomato puree
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Singapore registration number T0807483J registered 05/11/2009 with a renewal date of __________ and an expiration date of 06/06/2018 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Edible oils; edible fats; margarine; shortening; vegetable ghee (edible fats); vegetable ghee being edible fats; vanaspati (edible fats); vanaspati being edible fats; hydrogenated vegetable oils; nuts, prepared; prepared nuts; cashew kernels, processed; processed cashew kernels; peanuts, processed; processed peanuts; peanut butter; fruit, preserved; preserved fruit; raisins; fruits, tinned; tinned fruits; salads; potato chips; preserved mushrooms; preserved garden herbs (other than seasonings); tofu; mushrooms, preserved; preserved beans; albumen for food; beans, preserved; eggs; milk; milk beverages with milk predominating; milk products excluding ice cream, ice milk and frozen yogurt; milk beverages (milk predominating); cheese; milk products; yogurt; crustaceans, not live; shellfish, not live; crustaceans (not live); fish, preserved; shellfish (not live); meat; food products made from fish; poultry, not live; meat extracts; soups; fruit jellies; jams; cranberry sauce compote; jellies for food; preserved potato chips; cranberry sauce (compote); dried and cooked fruits and vegetables; preserved onions; potato chips, preserved: dried and cooked fruits and vegetables; sardines; onions (preserved); caviar and tomato pureeClass 029 for Edible oils; edible fats; margarine; shortening; vegetable ghee being edible fats; vanaspati being edible fats; hydrogenated vegetable oils; prepared nuts; processed cashew kernels; processed peanuts; peanut butter; preserved fruit; raisins; tinned fruits; potato chips; preserved mushrooms; tofu; preserved beans; albumen for food; eggs; milk; milk beverages with milk predominating; milk products excluding ice cream, ice milk and frozen yogurt; cheese; yogurt; crustaceans, not live; shellfish, not live; fish, preserved; meat; poultry, not live; meat extracts; soups; fruit jellies; jams; cranberry sauce compote; jellies for food; preserved potato chips; dried and cooked fruits and vegetables; preserved onions; sardines; caviar and tomato puree
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number T0807483J registered 05/11/2009 with a renewal date of __________ and an expiration date of 06/06/2018 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Wilmar Trading Pte Ltd, a company legally organized under the laws of SINGAPORE, having an address of
      56 Neil Road
      Singapore 088830,
      Singapore

Proposed: Wilmar International Limited, company legally organized under the laws of Singapore, having an address of
      56 Neil Road
      Singapore 088830,
      Singapore

SIGNATURE(S)
Declaration Signature
Signature
Signatory's Name: Yip Yoon Jee
Signatory's Position: Marketing Manager

Response Signature
Signature: /DES/     Date: 08/05/2013
Signatory's Name: David E, Sipiora
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 303.571.4000

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: 85747306
Internet Transmission Date: Mon Aug 05 11:00:18 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201308051100188
12428-85747306-500c7fb392e57af73c96a7235
e9551d6062a75fc22617e77a5ea33b72572074-N
/A-N/A-20130805104650542405