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. 88103269 SUB ZERO(Standard Characters, see http://uspto.report/TM/88103269/mark.png) has been amended as follows:

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

This is response to the October 23, 2019 Office Action in which the Examiner refused the previously submitted specimen, asserting that Applicant's specimen - a photograph of a bottle of vodka bearing the mark on the product label - purportedly "appears to consist of a digitally altered image or a mock-up of the mark on the goods and does not show the applied-for mark in actual use in commerce." Contrary to the Examining Attorney's assertion that the "submitted specimen appears to be an image of a bottle with a label with the applied-for mark digitally added to the bottle, because the label appears to float over the product", the submitted specimen was not a digitally altered image or a mock-up, and it clearly shows use of the mark as it appears in actual use in commerce. The submitted specimen is an accurate photograph of an actual bottle of vodka, showing the actual label applied to the product, as it is sold in the marketplace. The original specimen was not "created for submission with this application." The original specimen is a professional photograph of the product, for use in advertisements. The Examiner requests Applicant submit additional information for the record about the submitted specimen, in order to support that the current specimen of record is valid and proper. Applicant states that its distilled spirits; vodka are sold to consumers as drinks and cocktails at restaurants, and in retail bottles at restaurants, and thru retail stores, including Sub Zero Vodka Bar located at 308 N Euclid Ave, Saint Louis, MO 63108; Gamlin Whiskey House located at 236 N Euclid Ave, Saint Louis, MO 63108; Lukas Liquors; and other locations. Further, Applicant submits a substitute specimen herewith, that shows a bottle of Applicant's distilled spirits; vodka, as it appears on a store display shelf. Applicant confirms that the substitute specimen was/were in use in commerce prior to expiration of the filing deadline for a statement of use. The substitute specimen clearly reflects that the product labels shown in the original specimen are the exact labels that appear on the product packaging, as the product is displayed for sale to consumers. Inasmuch as the exact packaging submitted in the specimen of record and substitute specimen was and is in use in commerce, Applicant respectfully requests acceptance of the Statement of Use and issuance of the Certificate of Registration. If the Examiner has any further questions, the Examiner is invited to contact the undersigned Attorney of Record. Respectfully submitted, /lcs/ Lindsay Cohen Schneider E-mail: Lindsay.Schneider@bclplaw.com Phone: (314) 259-2481 Docketing: bcipdocketing@bclplaw.com

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 033 for Distilled spirits; vodka
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.

In International Class 033, the mark was first used at least as early as 10/00/2018 and first used in commerce at least as early as 10/00/2018.


Proposed:
Class 033 for Distilled spirits; vodka

Deleted Filing Basis: 1(b)
In International Class 033, the mark was first used at least as early as 10/00/2018 . and first used in commerce at least as early as 10/00/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 033. The specimen(s) submitted consists of photograph of a bottle of Applicant?s distilled spirits; vodka, as it appears on a store display shelf.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SUB ZERO, INC., a corporation of Missouri, having an address of
      306 N. Euclid Ave.
      St. Louis, Missouri 63108-1210
      United States

Proposed: SUB ZERO, INC., a corporation of Missouri, having an address of
      306 N. Euclid Ave.
      St. Louis, Missouri 63108-1210
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Matthew G. Minder. Matthew G. Minder of BRYAN CAVE LEIGHTON PAISNER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      211 NORTH BROADWAY, SUITE 3600
      ST. LOUIS, Missouri 63102
      United States
The docket/reference number is 1069829.3.
      The phone number is 314-259-2000.
      The fax number is 314-259-2020.
      The email address is bcipdocketing@bclplaw.com

The owner's/holder's proposed attorney information: Matthew G. Minder. Other appointed attorneys are Lindsay Cohen Schneider, and other attorneys from the firm of Bryan Cave Leighton Paisner LLP. Matthew G. Minder of BRYAN CAVE LEIGHTON PAISNER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      211 NORTH BROADWAY, SUITE 3600
      ST. LOUIS, Missouri 63102
      United States
The docket/reference number is 1069829.3.
      The phone number is 314-259-2000.
      The fax number is 314-259-2020.
      The email address is bcipdocketing@bclplaw.com

Matthew G. Minder submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      MATTHEW G. MINDER
      PRIMARY EMAIL FOR CORRESPONDENCE: bcipdocketing@bclplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 1069829.3.
Correspondence Information (proposed):
      Matthew G. Minder
      PRIMARY EMAIL FOR CORRESPONDENCE: bcipdocketing@bclplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lindsay.schneider@bclplaw.com

The docket/reference number is 1069829.3.

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)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /lcs/      Date: 04/23/2020
Signatory's Name: Lindsay Cohen Schneider
Signatory's Position: Attorney
Signatory's Phone Number: 314-259-2481 Attorney of Record


Response Signature
Signature: /lcs/     Date: 04/23/2020
Signatory's Name: Lindsay Cohen Schneider
Signatory's Position: Attorney of Record, MO Bar Member

Signatory's Phone Number: 314-259-2481

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:    MATTHEW G. MINDER
   BRYAN CAVE LEIGHTON PAISNER LLP
   
   211 NORTH BROADWAY, SUITE 3600
   ST. LOUIS, Missouri 63102
Mailing Address:    Matthew G. Minder
   BRYAN CAVE LEIGHTON PAISNER LLP
   211 NORTH BROADWAY, SUITE 3600
   ST. LOUIS, Missouri 63102
        
Serial Number: 88103269
Internet Transmission Date: Thu Apr 23 11:42:04 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200423114204190
810-88103269-710b9b2241123e897839b130a57
0167c1686f6b47f31cb23bcfcc32eb73e8a6b2-N
/A-N/A-20200423113836389154