| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87080698 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87080698/mark.png |
| LITERAL ELEMENT | ZENITH |
| 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 response to the examiner's Section 2(d) Refusal ? Likelihood of Confusion, the applicant would like to amend its application so that the application is now for the mark ZENITH for "electronic e-cigarette flavored e-juice" and not for "flavored tobacco". This amendment should take care of any likelihood of confusion. Applicant's initial identified goods description of flavored tobacco was related to registrant's goods description of "cigarette papers; cigarette rolling machines; cigarette rolling papers". With this amendment, it is clear that applicant's description of its goods as "electronic e-cigarette flavored e-juice" is distinct from the registrant's goods. It should be noted that this amendment does not change the class of the application as the class still remains as CLASS 34. Moreover the USPTO, had made changes to its classification system as of January 1, 2015 whereby applicants were to classify "Electronic cigarette liquid (e-liquid)" under CLASS 34 instead of CLASS 1. The applicant's goods are not for "cigarette papers, cigarette rolling machines and cigarette rolling papers", therefore the relevant goods are not used by the same classes of consumers. The applicant's initial application was under the correct CLASS 34. Therefore, the amendment to the goods description should overcome the examiner's refusal to register the mark pursuant to Section 2(d) likelihood of confusion. In response to the examiner's refusal to register the mark pursuant to "Specimen Refusal", it is submitted that the above amendment of the applicant's goods description should lead the examiner to revoke his specimen refusal. As the amendment is to amend the goods description to "electronic e-cigarette flavored e-juice" then the specimen attached to the application of the bottles contain a slightly pink or rose-colored liquid should suffice. In case the examiner maintains his specimen refusal, then the applicant amends its filing basis to intent to use under Section 1(b). In response to the examiner's refusal to register the mark due to the need for the applicant to submit additional information about its goods, the applicant wishes to submit the following information. Its goods are for "electronic e-cigarette flavored e-juice" which are for Electronic cigarette liquid (e-liquid) comprised of propylene glycol or vegetable glycerin. The applicant is a wholesaler and retailer of electronic e-cigarette flavored e-juice. Applicant's goods are not for "cigarette papers, cigarette rolling machines and cigarette rolling papers", therefore the relevant goods are not used by the same classes of consumers. | |
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\870\806\87080698\xml4\ ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | ZENITH logo on a bottle for sale |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 034 |
| DESCRIPTION | Flavored tobacco |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/04/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/04/2016 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 034 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | electronic e-cigarette flavored e-juice |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/04/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/04/2016 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\870\806\87080698\xml4\ ROA0003.JPG |
| SPECIMEN DESCRIPTION | ZENITH logo on bottle for sale |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The applicant is a wholesaler and retailer of electronic e-cigarette flavored e-juice comprised of propylene glycol or vegetable glycerin. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Vivek Suri/ |
| SIGNATORY'S NAME | Vivek Suri |
| SIGNATORY'S POSITION | Attorney |
| SIGNATORY'S PHONE NUMBER | 2125376936 |
| DATE SIGNED | 04/04/2017 |
| RESPONSE SIGNATURE | /Vivek Suri/ |
| SIGNATORY'S NAME | Vivek Suri |
| SIGNATORY'S POSITION | Attorney |
| SIGNATORY'S PHONE NUMBER | 2125376936 |
| DATE SIGNED | 04/04/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 04 18:21:34 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0170404182134916921-87080 698-580e7cee9ef83b5499ece 2f6924ead29a67615f5ca5c7c 9937b5e3a929a7f57-N/A-N/A -20170404172644955784 |
| 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) |
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.
