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. 88048644 EL TORO(Standard Characters, see http://uspto.report/TM/88048644/mark.png) has been amended as follows:

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

Please see the argument text attached in PDF format.

EVIDENCE
Evidence in the nature of Argument text and exhibit. has been attached.
Original PDF file:
evi_19821116039-20190604153216152748_._4_EL_TORO_O.A._Response__2d__Prior_pending__ID__Translation_.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Original PDF file:
evi_19821116039-20190604153216152748_._2019-06-04_EL_TORO_-_Exhibit_A.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric control devices for heating management; sensors for determining temperature; temperature indicator labels, not for medical purposes; temperature control apparatus (electric switches);computer software for controlling self-service terminals; software; electronic publications, downloadable
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: Electric control devices for heating management; sensors for determining temperature; temperature indicator labels, not for medical purposes; temperature control apparatus (electric switches); temperature control apparatus in the nature of electric switches for monitoring, controlling, switching hydraulic and pneumatic systems; computer software for controlling self-service terminals; software; game, decoder, compiler, anti-piracy and music-composition software; electronic publications, downloadable; electronic publications, downloadable in the nature of magazine and book in the field of music, alcohol and tobaccoClass 009 for Electric control devices for heating management; sensors for determining temperature; temperature indicator labels, not for medical purposes; temperature control apparatus in the nature of electric switches for monitoring, controlling, switching hydraulic and pneumatic systems; computer software for controlling self-service terminals; game, decoder, compiler, anti-piracy and music-composition software; electronic publications, downloadable in the nature of magazine and book in the field of music, alcohol and tobacco
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Cardboard containers; paper containers; printed matter; printed publications; printed calendars; printed guides; stickers; office requisites, except furniture; writing instruments; printed promotional material; posters
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: Cardboard containers; paper containers; printed matter; printed matter, namely, novels, reports, lessons and short stories in the field of music, alcohol and tobacco; printed publications; printed publications, namely, brochures, booklets, and teaching materials in the field of alcohol and tobacco; printed calendars; printed guides; printed guides for alcohol, tobacco and cigars; stickers; office requisites, except furniture; office requisites, except furniture, namely, staplers, staple removers and rubber bands; writing instruments; printed promotional material; printed promotional material, namely, advertising posters; postersClass 016 for Cardboard containers; paper containers; printed matter, namely, novels, reports, lessons and short stories in the field of music, alcohol and tobacco; printed publications, namely, brochures, booklets, and teaching materials in the field of alcohol and tobacco; printed calendars; printed guides for alcohol, tobacco and cigars; stickers; office requisites, except furniture, namely, staplers, staple removers and rubber bands; writing instruments; printed promotional material, namely, advertising posters; posters
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retailing and wholesaling of alcohols; retailing and wholesaling of tobaccos; import-export agencies; advertising; rental of advertising space; organization of exhibitions for commercial or advertising purposes; internet shopping; commercial information and advice for consumers (consumer advice shop)
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: Retailing and wholesaling of alcohols; Retail and wholesale store services featuring alcohols; retailing and wholesaling of tobaccos; retail and whole store services featuring tobaccos; online retail and wholesale store services featuring alcohols and tobaccos; advertising; import-export agencies; advertising services; rental of advertising space; internet shopping; organization of exhibitions for commercial or advertising purposes; commercial information and advice for consumers (consumer advice shop); internet shopping, namely operating an on-line shopping site in the field of alcohol and tobacco; commercial information and advice for consumers in the choice of products and servicesClass 035 for Retail and wholesale store services featuring alcohols; retail and whole store services featuring tobaccos; online retail and wholesale store services featuring alcohols and tobaccos; import-export agencies; advertising services; rental of advertising space; organization of exhibitions for commercial or advertising purposes; internet shopping, namely operating an on-line shopping site in the field of alcohol and tobacco; commercial information and advice for consumers in the choice of products and services
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.

ADDITIONAL STATEMENTS
Translation
The English translation of EL TORO in the mark is the bull.


SIGNATURE(S)
Response Signature
Signature: /Sangik Bae/     Date: 06/04/2019
Signatory's Name: Sangik Bae
Signatory's Position: Associate Attorney at Ladas & Parry LLP

Signatory's Phone Number: 312.427.1300

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: 88048644
Internet Transmission Date: Tue Jun 04 15:37:30 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201906041537303
61840-88048644-62095b46cb06c150ae71df592
46b439b068f8d38c9fede73aa4a5c183ffb391-N
/A-N/A-20190604153216152748