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. 87484575 E I C (Stylized and/or with Design, see http://uspto.report/TM/87484575/mark.png) has been amended as follows:

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

In response to the Office Action dated September 19, 2017, Applicant has amended the description of the mark and goods description as requested by the Examining Attorney.  The foreign application No. 016818254, being used as the basis for a priority claim under Section 44(d) of the Trademark Act, has matured into a registration in the applicant's country of origin. Applicant submits herewith the European Union Trademark (EUTM) Certificate of Registration No. 016818254.  Applicant believes the application is now in condition for allowance and requests that it be approved for publication.  If questions remain, the Examining Attorney is invited to contact Applicant’s counsel, Jennifer R. Ashton, by email at JenniferA.docketing@SeedIP.com or by telephone at 206-622-4900.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for Beers, ales and port; pale ales; India pale ales (IPA); beer based cocktails; dealcoholised beverages; sweet cider; syrups and concentrates for making beverages; gift drinks hampers containing beers, ales and porters, sweet cider, syrups and concentrates 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(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[ United Kingdom application number 016818254 filed 06/08/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Beers, ales and port; Beers and ales and porter; pale ales; India pale ales (IPA); beer based cocktails; dealcoholised beverages; dealcoholised beverages, namely, beer and wine; sweet cider; syrups and concentrates for making beverages; syrups and concentrates for making beverages, namely, soft drinks, tea flavoured beverages, sports and energy drinks; gift drinks hampers containing beers, ales and porters, sweet cider, syrups and concentrates for making beverages; beers, ales and porters, sweet cider, syrups and concentrates for making beverages, all sold as a unit in gift drinks hampersClass 032 for Beers and ales and porter; pale ales; India pale ales (IPA); beer based cocktails; dealcoholised beverages, namely, beer and wine; sweet cider; syrups and concentrates for making beverages, namely, soft drinks, tea flavoured beverages, sports and energy drinks; beers, ales and porters, sweet cider, syrups and concentrates for making beverages, all sold as a unit in gift drinks hampers
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 [ European Union Trademark - EUTM application number 016818254 filed 06/08/2017]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 016818254 registered 11/20/2017 with a renewal date of __________ and an expiration date of 06/08/2027 ], 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.
Original PDF file:
FRU0-38100227210-131311618_._EU_016818254_-_Reg_cert.PDF
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 033 for Alcoholic beverages except beers; fortified wines; sparkling wines; wines, spirits and liqueurs; hard cider; sherry; port wine; champagne; pre-mixed alcoholic beverages; preparations for making alcoholic beverages; gin; rum; whiskey; bourbon; port; brandy; gift drinks hampers containing alcoholic beverages except beers, wines, spirits and liqueurs, hard cider, sherry, port wine, champagne, gin; preparations for making alcoholic beverages, sold as a unit
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[ United Kingdom application number 016818254 filed 06/08/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Alcoholic beverages except beers; fortified wines; sparkling wines; wines, spirits and liqueurs; hard cider; sherry; port wine; champagne; pre-mixed alcoholic beverages; pre-mixed alcoholic beverages, other than beer based; preparations for making alcoholic beverages; preparations for making alcoholic beverages, namely, alcoholic cocktail mixes, alcoholic bitters, alcoholic extracts, alcoholic cordials, alcoholic jellies, alcoholic essences; gin; rum; whiskey; bourbon; port; brandy; gift drinks hampers containing alcoholic beverages except beers, wines, spirits and liqueurs, hard cider, sherry, port wine, champagne, gin; alcoholic beverages except beers, wines, spirits and liqueurs, hard cider, sherry, port wine, champagne, gin, and preparations for making alcoholic beverages, namely, alcoholic cocktail mixes, alcoholic bitters, alcoholic essences all sold as a unit in gift drinks hampers; preparations for making alcoholic beverages, sold as a unitClass 033 for Alcoholic beverages except beers; fortified wines; sparkling wines; wines, spirits and liqueurs; hard cider; sherry; port wine; champagne; pre-mixed alcoholic beverages, other than beer based; preparations for making alcoholic beverages, namely, alcoholic cocktail mixes, alcoholic bitters, alcoholic extracts, alcoholic cordials, alcoholic jellies, alcoholic essences; gin; rum; whiskey; bourbon; port; brandy; alcoholic beverages except beers, wines, spirits and liqueurs, hard cider, sherry, port wine, champagne, gin, and preparations for making alcoholic beverages, namely, alcoholic cocktail mixes, alcoholic bitters, alcoholic essences all sold as a unit in gift drinks hampers
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 [ European Union Trademark - EUTM application number 016818254 filed 06/08/2017]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 016818254 registered 11/20/2017 with a renewal date of __________ and an expiration date of 06/08/2027 ], 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.
Original PDF file:
FRU1-38100227210-131311618_._EU_016818254_-_Reg_cert.PDF
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the letters "E", "I", "C" in a clockwise pattern each positioned in separate sections of a field, the three sections defined by three cross-shaped designs that intersect at a central point of the field.

Miscellaneous Statement
Applicant has had a bona fide and effective industrial or commercial establishment in the United Kingdom as of the date of issuance of the foreign registration.


SIGNATURE(S)
Declaration Signature

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.

Signature: /Jennifer R. Ashton/      Date: 02/22/2018
Signatory's Name: Jennifer R. Ashton
Signatory's Position: Attorney for Applicant, Washington State Bar Member
Signatory's Phone Number: 206-622-4900


Response Signature
Signature: /Jennifer R. Ashton/     Date: 02/22/2018
Signatory's Name: Jennifer R. Ashton
Signatory's Position: Attorney of Record, WA state

Signatory's Phone Number: 206-694-4855

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: 87484575
Internet Transmission Date: Thu Feb 22 17:03:05 EST 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201802221703057
80678-87484575-510be371dbee214aea7fa18c0
8e7f70908e894f4dca821485f72e35e28c253d38
-N/A-N/A-20180222145746574504