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 NUMBER88070818
LAW OFFICE ASSIGNEDLAW OFFICE 124
MARK SECTION
MARK https://tmng-al.uspto.gov/resting2/api/img/88070818/large
LITERAL ELEMENT ASSISI EURO-LOOP
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)

Applicant is grateful for the Examining Attorney’s letter dated December 4, 2018 and the Office Action and, further to the telephone discussion of the undersigned with the Examining Attorney dated March 20, 2019, submits the response.

 

In line with the Examining Attorney’s suggestion, Applicant respectfully requests to amend the specification of goods to read as follows:

 

Class 10:  High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care;

 

Class 18:  Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care.

 

With respect to the Class 18 language, in line with the USPTO Consistency Initiative, Applicant brings to the Examining Attorney’s attention the fact that it already owns very recently registered marks, namely Registrations Nos. 5,646,203 and 5,646,204, both for the same range of goods in Class 18 as the present application.  In those cases, the USPTO has also initially requested revision of classification and of the language of goods.  After Applicant submitted an argumented explanation why these goods belong to Class 18 as worded in those prior marks, the marks were accepted and passed to registration.

 

This clearly establishes that the USPTO has accepted this wording of goods as belonging to Class 18 rather than 10 and/or 24.

 

Applicant, therefore, respectfully requests, along with the USPTO Consistency Initiative provisions, that the Examining Attorney and/or Managing Attorney reviews this matter in its entirety, including the Consistency Initiative aspect, and provides her opinion.

 

In view of the above, favourable outcome of examination and passage of application to publication is respectfully requested.  If any additional information or clarifications are required, the Examining Attorney is respectfully requested to contact the undersigned, in particular if any remaining issues can be resolved in an Examiner’s Amendment.
GOODS AND/OR SERVICES SECTION (010)(current)
INTERNATIONAL CLASS010
DESCRIPTION
High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers and beds, medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (010)(proposed)
INTERNATIONAL CLASS010
TRACKED TEXT DESCRIPTION
High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers and beds, medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care
FINAL DESCRIPTION
High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (018)(current)
INTERNATIONAL CLASS018
DESCRIPTION
Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (018)(proposed)
INTERNATIONAL CLASS018
TRACKED TEXT DESCRIPTION
Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care; Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care
FINAL DESCRIPTION
Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care
FILING BASISSection 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE /Max Vern/
SIGNATORY'S NAME Max Vern
SIGNATORY'S POSITION Attorney of Record, NY Bar Member
SIGNATORY'S PHONE NUMBER (212) 336-8000
DATE SIGNED 03/20/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Mar 20 17:40:49 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XXX
-20190320174049854221-880
70818-6204150837cc78790e9
22b9c90e8a61552577946514f
8ec7f3644e87a183d11-N/A-N
/A-20190320173901022665


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. 88070818 ASSISI EURO-LOOP(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/88070818/large) 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 December 4, 2018 and the Office Action and, further to the telephone discussion of the undersigned with the Examining Attorney dated March 20, 2019, submits the response.

 

In line with the Examining Attorney’s suggestion, Applicant respectfully requests to amend the specification of goods to read as follows:

 

Class 10:  High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care;

 

Class 18:  Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care.

 

With respect to the Class 18 language, in line with the USPTO Consistency Initiative, Applicant brings to the Examining Attorney’s attention the fact that it already owns very recently registered marks, namely Registrations Nos. 5,646,203 and 5,646,204, both for the same range of goods in Class 18 as the present application.  In those cases, the USPTO has also initially requested revision of classification and of the language of goods.  After Applicant submitted an argumented explanation why these goods belong to Class 18 as worded in those prior marks, the marks were accepted and passed to registration.

 

This clearly establishes that the USPTO has accepted this wording of goods as belonging to Class 18 rather than 10 and/or 24.

 

Applicant, therefore, respectfully requests, along with the USPTO Consistency Initiative provisions, that the Examining Attorney and/or Managing Attorney reviews this matter in its entirety, including the Consistency Initiative aspect, and provides her opinion.

 

In view of the above, favourable outcome of examination and passage of application to publication is respectfully requested.  If any additional information or clarifications are required, the Examining Attorney is respectfully requested to contact the undersigned, in particular if any remaining issues can be resolved in an Examiner’s Amendment.



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers and beds, medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care
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: High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers and beds, medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care

Class 010 for High frequency electromagnetic therapy apparatus; pet and animal accessories designed for holding pet and animal treatment devices and apparatus, namely, animal carriers, beds and medical bags designed to hold high frequency electromagnetic therapy apparatus, all for use in veterinary care
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 018 for Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care
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: Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, straps, blankets, pads in the nature of coverings and wearables and other pet and animal accessories designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care; Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care

Class 018 for Pet and animal garments and related devices consisting of torso and leg wraps, harnesses, restraining straps, blankets, and pads in the nature of coverings and wearables; pet and animal accessories in the nature of torso and leg wraps, harnesses, blankets, pads and covers for animals, all designed for holding pet and animal treatment devices and apparatus in the nature of high frequency electromagnetic therapy apparatus, all for use in veterinary care
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: /Max Vern/     Date: 03/20/2019
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 a Canadian attorney/agent, or an associate thereof, who represents an owner/holder located in Canada; that he/she is either registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c) or he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and, that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88070818
Internet Transmission Date: Wed Mar 20 17:40:49 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190320174049
854221-88070818-6204150837cc78790e922b9c
90e8a61552577946514f8ec7f3644e87a183d11-
N/A-N/A-20190320173901022665