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. 87353390 BLACK LABEL (Stylized and/or with Design, see http://uspto.report/TM/87353390/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 003 for Cosmetic preparations against sunburn; face and body creams; non-medicated preparations for the care of hair; non-medicated preparations for the care of skin; sun screen preparations; sun-tanning preparations

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for analgesic preparations; antibiotic preparations; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the relief of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical preparations for the treatment of headaches; pharmaceutical preparations for the treatment of inflammatory connective tissue diseases and injuries; pharmaceutical preparations for the treatment of inflammatory muscle diseases and disorders; pharmaceutical preparations for the treatment of metabolic disorders, namely, diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism; pharmaceutical preparations for the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia; pharmaceutical preparations for the treatment of skin irritations, namely, bee stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for wounds; topical anesthetics; analgesic preparations; antibiotic preparations; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the relief of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical preparations for the treatment of headaches; pharmaceutical preparations for the treatment of inflammatory connective tissue diseases and injuries; pharmaceutical preparations for the treatment of inflammatory muscle diseases and disorders; pharmaceutical preparations for the treatment of metabolic disorders, namely, diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism; pharmaceutical preparations for the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia; pharmaceutical preparations for the treatment of skin irritations, namely, bee stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for wounds; topical anesthetics;delivery systems in the nature of topical applications, namely, foams, gels, creams, sprays, lotions and ointments which act as a base and prepare the skin to receive therapeutic preparations that are absorbed into the blood stream through the skin
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1798250 filed 08/30/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: analgesic preparations; antibiotic preparations; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the relief of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical preparations for the treatment of headaches; pharmaceutical preparations for the treatment of inflammatory connective tissue diseases and injuries; pharmaceutical preparations for the treatment of inflammatory muscle diseases and disorders; pharmaceutical preparations for the treatment of metabolic disorders, namely, diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism; pharmaceutical preparations for the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia; pharmaceutical preparations for the treatment of skin irritations, namely, bee stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for wounds; topical anesthetics; analgesic preparations; delivery systems in the nature of topical applications, namely, foams, gels, creams, sprays, lotions and ointments which act as a base and prepare the skin to receive therapeutic preparations that are absorbed into the blood stream through the skin; antibiotic preparations; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the relief of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical preparations for the treatment of headaches; pharmaceutical preparations for the treatment of inflammatory connective tissue diseases and injuries; pharmaceutical preparations for the treatment of inflammatory muscle diseases and disorders; pharmaceutical preparations for the treatment of metabolic disorders, namely, diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism; pharmaceutical preparations for the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia; pharmaceutical preparations for the treatment of skin irritations, namely, bee stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for wounds; topical anestheticsClass 005 for analgesic preparations; antibiotic preparations; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical preparations for the relief of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical preparations for the treatment of headaches; pharmaceutical preparations for the treatment of inflammatory connective tissue diseases and injuries; pharmaceutical preparations for the treatment of inflammatory muscle diseases and disorders; pharmaceutical preparations for the treatment of metabolic disorders, namely, diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism; pharmaceutical preparations for the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia; pharmaceutical preparations for the treatment of skin irritations, namely, bee stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for wounds; topical anesthetics; delivery systems in the nature of topical applications, namely, foams, gels, creams, sprays, lotions and ointments which act as a base and prepare the skin to receive therapeutic preparations that are absorbed into the blood stream through the skin
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1798625 filed 08/30/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

ADDITIONAL STATEMENTS
Miscellaneous Statement
In this Response, Applicant is deleting Class 3 from the application, removing the duplicative entry from Class 5, correcting the number of the Canadian application which forms the basis for a priority claim, and addressing the "not in lawful use in commerce" issue. On the latter, Applicant is relying only upon an intent to use the mark with the listed goods. The products that are the subject of the application do not include marijuana, cannabis, marijuana-based, cannabis-based preparations, or marijuana-based or cannabis-based extracts or derivatives, synthetic marijuana, or any other illegal controlled substances. Instead, Applicant plans to expand its business and intends to use the mark with other types of products. Future products may or may not be shown on Applicant's future website. Accordingly, Applicant respectfully submits that the "non lawful use in commerce" refusal should be withdrawn.


SIGNATURE(S)
Response Signature
Signature: /Mark N. Mutterperl/     Date: 12/04/2017
Signatory's Name: Mark N. Mutterperl
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 917 410 7941

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: 87353390
Internet Transmission Date: Mon Dec 04 07:55:43 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20171204075543542
194-87353390-510dbbc08fb0e192bcd7b3024c3
f58d8c4cfb096ca5df91c97f2503cfb6780-N/A-
N/A-20171204074640193985