Response to Office Action

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)

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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. 85984274 MCCAIN (Stylized and/or with Design, see http://uspto.report/TM/85984274/mark.png) has been amended as follows:

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

This amendment is being filed in response to the Office Action dated May 24, 2017. 

 

Please amend the present application by deleting the present recitation of goods and services and substituting the following:

 

- - PROCESSED POTATO AND POTATO PRODUCTS, NAMELY, BAKED, ROASTED, FRIED, FRENCH FRIED, BATTERED, EXTRUDED, CHILLED PROCESSED, PACKAGED PROCESSED AND FROZEN POTATOES, SWEET POTATOES, PROCESSED POTATOES SPECIALITIES, NAMELY, POTATO WEDGES, DICED HASH BROWNS, HASH BROWN PATTIES, LATTICE-CUT CHIPS, POTATO PATTIES, DICED POTATO CUBES, POTATO PUFFS, AND BREADED AND BATTERED ONION RINGS IN INTERNATIONAL CLASS 29.

 

COUPON SERVICES AND CONTEST SERVICES FOR PROMOTING THE GOODS AND SERVICES OF OTHERS IN INTERNATIONAL CLASS 35.

 

PROVIDING INFORMATION IN THE FIELD OF FOOD AS IT RELATES TO HEALTHY EATING AND NUTRITION THROUGH THE USE OF PRINTED MATERIAL, ELECTRONIC MATERIALS OR THROUGH ELECTRONIC WEBSITES; INFORMATION SERVICES, NAMELY, PROVIDING A WEBSITE FEATURING INFORMATION IN THE FIELD OF FOOD AS IT RELATES TO HEALTHY EATING AND NUTRITION IN INTERNATIONAL CLASS 44 - -

 

Reconsideration and allowance of the present application is respectfully requested.

 

REMARKS

 

The Trademark Examining Attorney has requested clarification of Applicant’s identification of services with respect to services set forth originally in International Class 35.  In that regard, Applicant has accepted the Trademark Examining Attorney’s suggestions and has amended the present application by dividing out certain services previously identified in International Class 35, and adding such services to newly added International Class 44.

 

With respect to the goods set forth in International Class 29, they are identical to what is identified in the present application.  Thus, Applicant has only amended the identification of services in International Class 35 to overcome the Trademark Examining Attorney’s refusal.  Based upon this amendment, Applicant respectfully requests that its mark be passed to publication.

 

As set forth above, based upon the present amendment, Applicant has added an additional class to this application.  By adding an additional class, based upon the original filing of the present application and based upon the USPTO’s schedule of fees, a payment of $325 would be required.  However, apparently, the fee is $400 with the additional fee of $75 representing an extension or late fee.  Since Applicant has timely filed this response, Applicant does not understand what the additional fee represents.  Applicant’s representative has discussed this with the Trademark Examining Attorney to determine the appropriateness of this fee. 

 

In light of the fact that a response is due by November 24, 2017, Applicant authorizes the Trademark Examining Attorney to charge Deposit Account No. 12-1095 the designated fee of $400.  If it is determined in the future that an overpayment was submitted, please credit any overpayments to our Deposit Account No. 12-1095. 

 

Based upon the foregoing amendment, please pass Applicant’s mark to publication.  If for any reason there are any outstanding issues, the Trademark Examining Attorney is requested to contact Applicant’s representative.  Reconsideration and allowance of the present application is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing information in the field of food, healthy eating and nutrition through the use of printed material, electronic materials or through electronic websites; information services, namely, providing a website featuring information in the field of food, healthy eating and nutrition; and coupon services and contest services for promoting the goods and services of others
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA944430 registered 07/28/2016 with a renewal date of __________ and an expiration date of 07/28/2031 ], 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: Providing information in the field of food, healthy eating and nutrition through the use of printed material, electronic materials or through electronic websites; COUPON SERVICES AND CONTEST SERVICES FOR PROMOTING THE GOODS AND SERVICES OF OTHERS; information services, namely, providing a website featuring information in the field of food, healthy eating and nutrition; and coupon services and contest services for promoting the goods and services of othersClass 035 for COUPON SERVICES AND CONTEST SERVICES FOR PROMOTING THE GOODS AND SERVICES OF OTHERS
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA944430 registered 07/28/2016 with a renewal date of __________ and an expiration date of 07/28/2031 ], 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 hereby adds the following class of goods/services to the application:
New: Class 044 for PROVIDING INFORMATION IN THE FIELD OF FOOD AS IT RELATES TO HEALTHY EATING AND NUTRITION THROUGH THE USE OF PRINTED MATERIAL, ELECTRONIC MATERIALS OR THROUGH ELECTRONIC WEBSITES; INFORMATION SERVICES, NAMELY, PROVIDING A WEBSITE FEATURING INFORMATION IN THE FIELD OF FOOD AS IT RELATES TO HEALTHY EATING AND NUTRITION
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA944430 registered 07/28/2016 with a renewal date of __________ and an expiration date of 07/28/2031 ], 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.


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

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: /Paul H. Kochanski/      Date: 11/22/2017
Signatory's Name: PAUL H. KOCHANSKI
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER
Signatory's Phone Number: 908-654-5000


Response Signature
Signature: /Paul H. Kochanski/     Date: 11/22/2017
Signatory's Name: Paul H. Kochanski
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER

Signatory's Phone Number: 908.654.5000

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: 85984274
Internet Transmission Date: Wed Nov 22 11:16:57 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201711221116576
72708-85984274-510f87fdca2d67243444eea1c
29fcaed1c51e2bf92fd68ba1d1c8153a48833b1-
N/A-N/A-20171121122507563196