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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87869675 |
LAW OFFICE ASSIGNED |
LAW OFFICE 104 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/87869675/mark.png |
LITERAL ELEMENT |
CALIVA |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
Applicant respectfully requests that the likelihood of confusion refusal be withdrawn for the following reasons:
Limitation of Goods and Services to Particular Type
Applicant has limited its description of the goods and services to those “for advocacy of cannabis legalization”. The goods and services under the
registered mark cited by the examining attorney are not related to that type or channel of trade. Applicant respectfully submits that the goods and services are now clearly distinguished in terms of
the nature, types, and channels of trade, and that the same consumers are not likely to encounter goods and services from both applicant and the holder of the registered mark. Applicant submits that
this limitation is sufficient to distinguish the goods and services from the registered mark such that there is no longer any likelihood of confusion.
|
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
025 |
DESCRIPTION |
Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and other brandable apparel |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
025 |
TRACKED TEXT DESCRIPTION |
Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and other
brandable apparel; Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and tops for advocacy of cannabis
legalization |
FINAL DESCRIPTION |
Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and tops for advocacy of cannabis
legalization |
FILING BASIS |
Section 1(b) |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Brian S. Boon/ |
SIGNATORY'S NAME |
Brian S. Boon |
SIGNATORY'S POSITION |
Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER |
2533587270 |
DATE SIGNED |
12/21/2018 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Dec 21 18:39:36 EST 2018 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XX-20
181221183936210734-878696
75-6206ec6225c3bc2c8ab6da
71b626fe034f0ed71a81b316d
87e383e262036b4a9ea-N/A-N
/A-20181221183005807621 |
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.
87869675 CALIVA (Stylized and/or with Design, see http://uspto.report/TM/87869675/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Applicant respectfully requests that the likelihood of confusion refusal be withdrawn for the following reasons:
Limitation of Goods and Services to Particular Type
Applicant has limited its description of the goods and services to those “for advocacy of cannabis legalization”. The goods and services under the
registered mark cited by the examining attorney are not related to that type or channel of trade. Applicant respectfully submits that the goods and services are now clearly distinguished in terms of
the nature, types, and channels of trade, and that the same consumers are not likely to encounter goods and services from both applicant and the holder of the registered mark. Applicant submits that
this limitation is sufficient to distinguish the goods and services from the registered mark such that there is no longer any likelihood of confusion.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and other brandable apparel
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: Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and other brandable apparel;
Apparel, namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and tops for advocacy of cannabis legalizationClass 025 for Apparel,
namely, T-Shirts, polo shirts, long-sleeved shirts, jackets, pullovers, hoodies, and tops for advocacy of cannabis legalization
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: /Brian S. Boon/ Date: 12/21/2018
Signatory's Name: Brian S. Boon
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 2533587270
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: 87869675
Internet Transmission Date: Fri Dec 21 18:39:36 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20181221183936210
734-87869675-6206ec6225c3bc2c8ab6da71b62
6fe034f0ed71a81b316d87e383e262036b4a9ea-
N/A-N/A-20181221183005807621