PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
86198826 |
LAW OFFICE ASSIGNED |
LAW OFFICE 119 |
MARK SECTION |
MARK |
http://uspto.report/TM/86198826/mark.png |
LITERAL ELEMENT |
MALIBU |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
In the Office Action dated May 6, 2014, the Examining Attorney issued a 2(d) refusal based on U.S. Registration No. 3779728 and identified pending U.S. Serial Nos. 86178029, 86059246,
85755915 and 86089802 as potential conflicts to registration.
Applicant submits that on October 20, 2014, registrant Cielo Farms surrendered for cancellation U.S. Registration No. 3779728. In addition, U.S. Serial No. 86059246
was expressly abandoned on June 16, 2014. Applicant respectfully requests that the Examining Attorney withdraw the 2(d) refusal and potential 2(d) refusal pertaining to these
references.
Applicant respectfully requests that the subject application is suspended pending the disposition of U.S. Serial Nos. 86178029, 85755915 and 86089802. Applicant reserves
the right to present substantive arguments in favor of registration at a later date, if a Section 2(d) refusal later issues.
|
GOODS AND/OR SERVICES SECTION (030)(current) |
INTERNATIONAL CLASS |
030 |
DESCRIPTION |
Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals, bread, pastry and
confectionery, ices; sugar, honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
000940700 |
FOREIGN REGISTRATION
COUNTRY |
European Community |
FOREIGN REGISTRATION
DATE |
02/28/2000 |
FOREIGN EXPIRATION DATE |
09/25/2018 |
GOODS AND/OR SERVICES SECTION (030)(proposed) |
INTERNATIONAL CLASS |
030 |
TRACKED TEXT DESCRIPTION |
Coffee, tea, cocoa and artificial coffee; rice; tapioca and
sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; flour and preparations made from
cereals in the nature of processed cereals and read-to-eat cereals, bread, pastry and confectionery namely candy, ices in the nature of edible ices and flavored ices; sugar,
honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); vinegar, sauces, namely, condiments; spices; ice |
FINAL DESCRIPTION |
Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals in the nature of processed
cereals and read-to-eat cereals, bread, pastry and confectionery namely candy, ices in the nature of edible ices and flavored ices; sugar, honey, treacle; yeast, baking-powder; salt, mustard;
vinegar, sauces, namely, condiments; spices; ice |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
000940700 |
FOREIGN REGISTRATION
COUNTRY |
European Community |
FOREIGN REGISTRATION
DATE |
02/28/2000 |
FOREIGN EXPIRATION DATE |
09/25/2018 |
GOODS AND/OR SERVICES SECTION (032)(current) |
INTERNATIONAL CLASS |
032 |
DESCRIPTION |
Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations
for making beverages |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
GOODS AND/OR SERVICES SECTION (032)(proposed) |
INTERNATIONAL CLASS |
032 |
TRACKED TEXT DESCRIPTION |
Beers; mineral and aerated waters and other non-alcoholic beverages;
mineral and aerated waters and other non-alcoholic drinks, namely, carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored
drinks, and fruit juices; fruit beverages and fruit juices; syrups and other preparations for making beverages, namely,
non-alcoholic malt-based beverages, mineral, flavored and aerated waters, carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit
juices; syrups and other preparations for making beverages |
FINAL DESCRIPTION |
Beers; mineral and aerated waters and other non-alcoholic drinks, namely, carbonated and non-carbonated soft drinks, sports drinks,
energy drinks, fruit and fruit-flavored drinks, and fruit juices; syrups and other preparations for making beverages, namely, non-alcoholic malt-based beverages, mineral, flavored and aerated waters,
carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit juices |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
GOODS AND/OR SERVICES SECTION (033)(no change) |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Richard Y. Kim/ |
SIGNATORY'S NAME |
Richard Y. Kim |
SIGNATORY'S POSITION |
Attorney of Record, DC Bar Member |
DATE SIGNED |
10/22/2014 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Oct 22 14:25:23 EDT 2014 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
141022142523323874-861988
26-500c7b55aa07ac9d54e953
a904896c6f72918aa04640d1b
599525da4c42a29cd8-N/A-N/
A-20141022131954349381 |
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.
86198826 MALIBU(Standard Characters, see http://uspto.report/TM/86198826/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In the Office Action dated May 6, 2014, the Examining Attorney issued a 2(d) refusal based on U.S. Registration No. 3779728 and identified pending U.S. Serial Nos. 86178029, 86059246,
85755915 and 86089802 as potential conflicts to registration.
Applicant submits that on October 20, 2014, registrant Cielo Farms surrendered for cancellation U.S. Registration No. 3779728. In addition, U.S. Serial No. 86059246
was expressly abandoned on June 16, 2014. Applicant respectfully requests that the Examining Attorney withdraw the 2(d) refusal and potential 2(d) refusal pertaining to these
references.
Applicant respectfully requests that the subject application is suspended pending the disposition of U.S. Serial Nos. 86178029, 85755915 and 86089802. Applicant reserves
the right to present substantive arguments in favor of registration at a later date, if a Section 2(d) refusal later issues.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; sugar, honey, treacle;
yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
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 [ European Community registration number 000940700 registered
02/28/2000 with a renewal date of __________ and an expiration date of 09/25/2018 ], 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: Coffee, tea, cocoa and artificial coffee;
rice;
tapioca and sago;
flour and preparations made from cereals, bread, pastry and confectionery, ices;
flour and preparations made from cereals in the nature of processed
cereals and read-to-eat cereals, bread, pastry and confectionery namely candy, ices in the nature of edible ices and flavored ices;
sugar, honey, treacle;
yeast, baking-powder;
salt, mustard;
vinegar, sauces (condiments);
vinegar, sauces, namely, condiments;
spices;
iceClass 030 for Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago;
flour and preparations made from cereals in the nature of processed cereals and read-to-eat cereals, bread, pastry and confectionery namely candy, ices in the nature of edible ices and flavored ices;
sugar, honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces, namely, condiments; spices; ice
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 [ European Community registration number 000940700 registered
02/28/2000 with a renewal date of __________ and an expiration date of 09/25/2018 ], 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 proposes to amend the following class of goods/services in the application:
Current: Class 032 for Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages
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 [__________ registration number __________ registered
__________ with a renewal date of __________ and an expiration date of __________ ], 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: Beers;
mineral and aerated waters and other non-alcoholic beverages;
mineral and aerated waters and other non-alcoholic drinks, namely, carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit
juices;
fruit beverages and fruit juices;
syrups and other preparations for making beverages, namely, non-alcoholic
malt-based beverages, mineral, flavored and aerated waters, carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit juices;
syrups and other preparations for making beveragesClass 032 for Beers; mineral and aerated waters and other non-alcoholic drinks, namely, carbonated and
non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit juices; syrups and other preparations for making beverages, namely, non-alcoholic malt-based
beverages, mineral, flavored and aerated waters, carbonated and non-carbonated soft drinks, sports drinks, energy drinks, fruit and fruit-flavored drinks, and fruit juices
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 [__________ registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], 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.
SIGNATURE(S)
Response Signature
Signature: /Richard Y. Kim/ Date: 10/22/2014
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record, DC Bar Member
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: 86198826
Internet Transmission Date: Wed Oct 22 14:25:23 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141022142523323
874-86198826-500c7b55aa07ac9d54e953a9048
96c6f72918aa04640d1b599525da4c42a29cd8-N
/A-N/A-20141022131954349381