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. 86269862 PANTHEON(Standard Characters, see http://uspto.report/TM/86269862/mark.png) has been amended as follows:

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

Applicant notes that this application was rejected on the ground of likelihood of confusion with U.S. Registration No. 1743867 for the mark PANTHEON. As Applicant has deleted the goods identified by the PTO as problematic and likely to cause confusion from its application, it requests the withdrawal of the refusal on these grounds.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 007 for Electric coffee grinders for domestic or commercial use; electric milk frothers

Applicant hereby deletes the following class of goods/services from the application.
Class 011 for Electrical appliances, namely, espresso makers and coffee makers for domestic use

Applicant hereby deletes the following class of goods/services from the application.
Class 021 for Hand operated coffee grinders and coffee mills; insulated coffee and beverage cups; non-paper reusable coffee filters; non-paper coasters; insulated vacuum bottles; coffee cups, tea cups and mugs; glassware; dishes; plates and bowls; trivets; storage canisters; decorative storage containers for food; non-electric milk frothers; scoops

Applicant hereby deletes the following class of goods/services from the application.
Class 029 for Dried milk powder; powdered milk; milk; flavored milk; milk based beverages

Applicant hereby deletes the following class of goods/services from the application.
Class 032 for Soft drinks; liquid and powdered beverage mixes; flavoring syrups for beverages

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Coffee; ground coffee; cocoa; tea and herbal tea; coffee, tea, cocoa and espresso beverages; beverages made with a base of coffee; beverages made with a base of espresso; beverages made with a base of tea; powdered chocolate and vanilla; sauces to add to beverages; chocolate syrup; chocolate sauce
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: Coffee; ground coffee; cocoa; coffee and espresso beverages; tea and herbal tea; beverages made with a base of coffee; coffee, tea, cocoa and espresso beverages; beverages made with a base of espresso; beverages made with a base of tea; powdered chocolate and vanilla; sauces to add to beverages; chocolate syrup; chocolate sauceClass 030 for Coffee; ground coffee;coffee and espresso beverages; beverages made with a base of coffee; beverages made with a base of espresso
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.

SIGNATURE(S)
Response Signature
Signature: /Julia Anne Matheson/     Date: 11/03/2014
Signatory's Name: Julia Anne Matheson
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202.408.4020

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: 86269862
Internet Transmission Date: Mon Nov 03 11:52:06 EST 2014
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2014110311520663103
3-86269862-500a821386deaa7b859383f4ed71b
ebc298212fc634b9ccffff3d33df95255d0f8-N/
A-N/A-20141103114959134361