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. 87728409 BERAIN (Stylized and/or with Design, see http://uspto.report/TM/87728409/mark.png) has been amended as follows:

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

Applicant is grateful for the Examining Attorney’s letter dated March 31, 2018 and the Office Action, and hereby responds thereto.

 

In compliance with the Examining Attorney’s request, Applicant respectfully agrees to amend the list of goods to read as follows:

 

Class 32 - Beers; mineral and aerated waters; non-alcoholic beverages, namely, soft drinks, colas; fruit beverages; syrups for making beverages; preparations for making beverages, namely, fruit drinks.

 

Further, in response to the Examining Attorney’s inquiry, Applicant respectfully submits that the wording “berain” was arbitrarily coined by the Applicant and, as such, has no meaning or significance in the relevant industry, including Applicant’s industry, nor as applied to the listed goods.  Equally, it does not identify a geographic place nor has any meaning in a foreign language.

 

Accordingly, Applicant respectfully adds the appropriate transliteration statement to this effect.

 

Finally, as suggested by the Examining Attorney, Applicant respectfully requests to add the mark’s description statement as follows:

 

The mark consists of wording “berain” in stylized turquoise lettering and underneath it the Arabic characters which transliterate to “berain” in purple.  There are six purple snowflake designs around the Arabic characters and one larger purple snowflake dotting the “i" in “berain”.

 

In view of the above, favorable outcome of examination and passage of application to publication is respectfully requested.  If any additional information or clarifications are required, or if an Examiner’s Amendment is suggested, the Examining Attorney is respectfully requested to contact the undersigned.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages; syrups and other preparations for making beverages
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Saudi Arabia registration number 143009036 registered 12/14/2010 with a renewal date of __________ and an expiration date of 07/04/2019 ], 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.

Proposed:
Tracked Text Description: Beers; mineral and aerated waters and other non-alcoholic beverages; mineral and aerated waters; non-alcoholic beverages, namely, soft drinks, colas; syrups and other preparations for making beverages; fruit beverages; syrups for making beverages; preparations for making beverages, namely, fruit drinksClass 032 for Beers; mineral and aerated waters; non-alcoholic beverages, namely, soft drinks, colas; fruit beverages; syrups for making beverages; preparations for making beverages, namely, fruit drinks
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Saudi Arabia registration number 143009036 registered 12/14/2010 with a renewal date of __________ and an expiration date of 07/04/2019 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of wording "berain" in stylized turquoise lettering and underneath it the Arabic characters which transliterate to "berain" in purple. There are six purple snowflake designs around the Arabic characters and one larger purple snowflake dotting the "i" in "berain".

Transliterations
The non-Latin characters in the mark transliterate to "berain" and this has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Max Vern/     Date: 06/24/2018
Signatory's Name: Max Vern
Signatory's Position: Attorney of Record, NY Bar Member

Signatory's Phone Number: (212) 336-8000

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: 87728409
Internet Transmission Date: Sun Jun 24 10:51:06 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.X.XXX-20180624105106208
566-87728409-61049fb879db384476dae374e49
e929b12a90d1976a7d5881e2228f06676da-N/A-
N/A-20180624104353678000