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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88095430 HOLA(Standard Characters, see http://uspto.report/TM/88095430/mark.png) has been amended as follows:

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Office Action of May 19, 2020 raised a new issue, namely that an assignment is required for ownership change because Applicant, in its prior Office Action Response of April 16, 2020, (1) changed the owner name from "Jack Henry Spirits" to "Jack Henry Spirits LLC", (2) removed the "DBA Jack Henry Spirits", (3) updated the owner's address, and (4) changed the legal entity section from a "Utah corporation" to a "Utah limited liability company". These changes were correctable errors that do not require a new assignment because no ownership change has occurred; rather, Applicant was simply correcting the Applicant's name and legal entity type to the correct name and entity as they existed at the time of filing the instant application. TMEP 1201.02(c) lists the following correctable errors that would not require an assignment of ownership: (1) Trade Name Set Forth as Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant's correct legal name is permitted. Cf. In re Atl. Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats 1990) (finding that Post Registration staff erred in refusing to allow amendment of affidavit under 15 U.S.C. §1058 to show registrant's corporate name rather than registrant's trade name). . . . (3) Minor Clerical Error. Minor clerical errors such as the mistaken addition or omission of "The" or "Inc." in the applicant's name may be corrected by amendment, as long as this does not result in a change of entity. However, change of a significant portion of the applicant's name is not considered a minor clerical error. . . . (7) Non-Existent Entity. If the party listed as the applicant did not exist on the application filing date, the application may be amended to correct the applicant's name. See Accu Pers. Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (holding application not void ab initio where corporation named as applicant technically did not exist on filing date, since four companies who later merged acted as a single commercial enterprise when filing the application); Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of an originally named corporate applicant which was never legally incorporated, because the individuals and non-existent corporation were found to be the same, single commercial enterprise); Pioneer Elec., 183 USPQ 613 (holding that applicant's name may be corrected where the application was mistakenly filed in the name of a fictitious and non-existent party). Example 1: If the applicant is identified as ABC Company, a Delaware partnership, and the true owner is ABC LLC, a Delaware limited liability company, the application may be amended to correct the applicant's name and entity if the applicant states on the record that "ABC Company, a Delaware partnership, did not exist as a legal entity on the application filing date." http://rdms-tmep-vip.gov.uspto.report/resource/images/icon_note.png. Applicant asserts that any one or all of the above mentioned correctable errors apply to the changes made to the owner name and legal entity sections of the instant application. More specifically, the application was filed in the name of "Jack Henry Spirits" a "Utah corporation" with a "DBA Jack Henry Spirits" but Applicant corrected this to be "Jack Henry Spirits LLC" a "Utah limited liability company" in the prior Office Action Response. Jack Henry Spirits LLC has existed since 2015 and the subject trademark application was filed in 2018. Therefore, Applicant states for the record that the above sections of the TMEP apply to allow the correctable error without an assignment as "Jack Henry Spirits DBA Jack Henry Spirits, a Utah corporation" did not exist as a legal entity on the application filing date"; instead, "Jack Henry Spirits LLC, a Utah limited liability company" did exist as of the application filing date and no change in ownership occurred requiring an assignment. In part, this was due to Applicant setting forth its tradename in the original application and a clerical error in identifying Applicant's legal entity. In view of the foregoing remarks, Applicant respectfully submits that its HOLA mark is entitled to registration and requests that it be promptly allowed for publication. If the Examining Attorney requires any changes in the application that could be made by an Examiner's Amendment, Applicant respectfully requests that the Examining Attorney contact Applicant's attorney of record.

Correspondence Information (current):
      Seth W. Black
      PRIMARY EMAIL FOR CORRESPONDENCE: seth@blkip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@blkip.com

The docket/reference number is 10000.5.
Correspondence Information (proposed):
      Seth W. Black
      PRIMARY EMAIL FOR CORRESPONDENCE: seth@blkip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@blkip.com

The docket/reference number is 10000.5.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Seth W. Black/     Date: 11/18/2020
Signatory's Name: Seth W. Black
Signatory's Position: Attorney of record, Utah Bar member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Seth W. Black
   Black IP, PLLC
   
   370 S 300 E
   Salt Lake City, Utah 84111
Mailing Address:    Seth W. Black
   Black IP, PLLC
   370 S 300 E
   Salt Lake City, Utah 84111
        
Serial Number: 88095430
Internet Transmission Date: Wed Nov 18 22:12:36 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXX:XXX:XXXX:XX
XX:XXXX-20201118221236065643-88095430-75
07e7a4b688234dd90cd87f7bff417990dd2d5d84
ae36bb2c359c796d7f6f25-N/A-N/A-202011182
13817902411