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 07/31/2017)

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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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86855103 SUBLIME(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86855103/large) has been amended as follows:

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

The purpose of this submission is to respond to the examining attorney's office action issued April 8, 2016 concerning the application filed by Sublime Brands, LLC ("Applicant") for the mark SUBLIME, Serial No. 86855103.  In this office action, the examining attorney has initially refused registration based upon a likelihood of confusion with the marks SUBLIME CUPCAKES (U.S. Reg. No. 4887597)  and SUBLIME COFFEE (U.S. Reg. No. 3853259) (the "Cited Registrations").  Trademark Act Section 2(d), 15 U.S.C. §1052(d).

Accepting that an examiner must decide each case on its merits, it remains an oft-cited principle that the USPTO strives for consistency of examination.  In re Stenographic Machines, Inc., 199 USPQ 313, 317 (Comm'r Pats. 1978)   Without waiving any right to challenge either of the Cited Registrations in later cancellation proceedings, the Applicant respectfully asserts that it is inconsistent for its application for SUBLIME to have be denied based upon a likelihood of confusion with the Cited Registrations.

Applicant already owns a federal registration for SUBLIME DOUGHNUTS, U.S. Reg. No. 4079357 reciting "bakery goods and doughnuts."  The term "DOUGHNUTS" is disclaimed apart from the mark as shown, and thus, the heart of the mark is SUBLIME.  This application was filed on February 28, 2011, which pre-dates the filing date of the SUBLIME CUPCAKES.   

With respect to SUBLIME COFFEE, the Applicant points out that the application that matured into this registration preceded the application date of SUBLIME DOUGHNUTS; however, it was not ultimately a blocking registration of the Applicant's pre-existing SUBLIME DOUGHNUTS application.  Moreover, Applicant asserts, upon information and belief, that this mark is no longer used in commerce. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Doughnuts, ice cream, ice cream truffles, popsicles, croissants, chocolate confections, cookies, coffee and tea
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: Doughnuts, ice cream, ice cream truffles, popsicles, croissants, chocolate confections, cookies, coffee and tea; Doughnuts, ice cream, ice cream desserts, namely, ice cream truffles, frozen confections, namely, freezer pops, croissants, chocolate confections, cookies, coffee and tea.Class 030 for Doughnuts, ice cream, ice cream desserts, namely, ice cream truffles, frozen confections, namely, freezer pops, croissants, chocolate confections, cookies, coffee and tea.
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: /John C. McElwaine/     Date: 10/05/2016
Signatory's Name: John C. McElwaine
Signatory's Position: Attorney of Record, Member of SC and DC bars

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: 86855103
Internet Transmission Date: Wed Oct 05 11:38:07 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20161005113807
698964-86855103-570899441c71a1030bae1ef6
1b4e279d1a92ae0342d1be57d911fe610bbd9a4f
88e-N/A-N/A-20161005104042760391