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. 88169289 MAYA (Stylized and/or with Design, see http://uspto.report/TM/88169289/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION The Office Action issued on February 4th, 2019 being responded within the six months before it?s deadline on August 4th, 2019 as follows Likelihood of confusion Section 2(d) refusal: The Examiner has refused Applicant's MAYA and design mark for fruits, namely, avocados, based on perceived confusing similarity with the cited registration for MAYA (No. Reg. 4952425) Although the similarities are taken mainly, the elements as a whole must also be taken into consideration, which is not done by the authority since it only attempts in an unfounded and improper way to start from the supposed similarities without the same being true as later explained. It also shows that similarity must be assessed by imposition, that is, what at first sight or sound produces in the consumer, that is, by looking at the marks in their entirety and not comparing them side by side, as the opposition does in a way not only wrong but in a fraudulent way, making decontextualized comparisons of the details of the brands, not being the advertising impact or perception that the consumer appreciates and obtains from the brands, as well as the similarity it must be appreciated assuming that the confusion can be suffered by the average consumer, and that it pays common and ordinary attention, which does not make the meticulous study that the authority itself. Consequently, it must be understood that it must be avoided giving a registered sign with unfounded exclusivity, as the authority tries to point, that unduly limits the other economic agents from using symbols that, due to their characteristics, cannot generate error in the public regarding the commercial origin of a service or good, because only in this way can fair competition be guaranteed in the market through the right of industrial property. For this purpose, one of the parameters that must be weighed is the greater or lesser distinctive capacity that a sign has regarding the consumer to identify the product or service to which it is applied. Therefore, it is clear that a brand must be valued for its distinctiveness, an issue that is present in the immediate case. The registered mark MAYA (No. Reg. 4952425) within class 31 regarding will be analyzed from the perspective of three essential elements of the mark: phonetic, visual and ideological elements, the latter in relation with its commercial activity. 1. Phonetical: Pronunciation or sound, in this case the elements are the same MAYA, which pronunciation is (/ ˈmaɪə/) in the same way for both trademarks, nevertheless, a wide variety of trademarks using the same distinctive element being Maya, similarly pronounced (/ˈmaɪə/) as in both, the registered and the applicant?s trademarks under class 31, may be found within the USPTO?s TSDR system, which submitted herewith are its?s printouts of use- based trademark registrations for unprocessed fruits featuring the term "MAYA" being as follows: MAYACROPS Reg. No. 2704207 STANDARD CHARACTER MARK MAYA PINEAPPLE Reg. No. 4952426 MAYA LUXURIOUS Reg. No. 5393555 STANDARD CHARACTER MARK MAYA HAWAIIAN PLANTAIN Reg. No. 2498827 TROPICAL MAYA Reg. No. 3298503 Applicant?s trademark: MAYA Serial No. 88169289 The enlisted trademark?s products are similar and do use the The applicant?s distinctiveness resides in being the element MAYA a strong resemblance with the Mesoamerican Mayan civilization from the pre-Columbian Americas unlike the referred element ?MAYA? (No. Reg. 4952425) which doesn?t state nor relate any cultural resemblance. Additionally, the applicant has already successfully registered his trademark in Mexico, having its registration certificate submitted herewith. Being MAYA PINEAPPLE (Reg. No. 4952426) composed with a descriptive element, being a fruit, PINEAPPLE under class 31, and regardless of this was considered for register. TROPICAL MAYA as well, being the description of the geographic zone where most fruits are harvested, still was considered for publication as well. It is notable that the common, shared element between the marks cited, being "MAYA", is commonly used in association with unprocessed fruits such that the owner of the cited marks should not be given respectively the monopoly of the term MAYA when they are used as part of another party's distinctive composite mark on different goods. Third party use of "MAYA" in connection with unprocessed fruit is evidence of the weakness and dilution of the term "MAYA" in relation unprocessed fruits and weighs in favor of narrowing the scope of its protection against subsequent applications. See Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). 2. VISUAL: The distinctiveness from the applicant?s trademark from the other referred from the TSDR system, is clear enough for it to be considered. Being distinct with a particular design being drawn as a Mayan ? cultural headwear used by religious and political chieftains. MAYA (No. Reg. 4952425) was granted registration even though it had both an already registered element in trademarks within the same class and with no stylistic drawing, giving the applicant a stronger distinctiveness from the one of the referred registered mark. 3. IDEOLOGIC: The applicant identified his trademark under class 31 as ?fruits, namely avocados? for them to be sold while the registered trademark referred in the Office Action states: ?Fresh fruit, excluding, mango, watermelon and tomato, and fresh vegetables, excluding, broccoli, cauliflower, eggplant, onion and squash; organic fresh fruit, excluding, mango, watermelon and tomato, and organic fresh vegetables, excluding, broccoli, cauliflower, eggplant, onion and squash.? Considering the other two classes it was also registered, being 29 for canned fruits and vegetables; canned or bottled fruits; canned or bottled vegetables and 32 for aerated fruit juices; beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; concentrated fruit juice; concentrates for making fruit juices; frozen fruit-based beverages; fruit drinks and fruit juices; fruit juice concentrates; fruit nectars; mixed fruit juice; non-alcoholic beverages containing fruit juices; vegetable juices; and vegetable-fruit juices makes clear the referred registered mark the economic activity, being fruit and vegetables juices and beverages, which they clearly don?t make out of avocados. Being so, It?s clear a different economic activity between both the applicant?s MAYA (Serial No. 88169289) and MAYA (No. Reg. 4952425), making the former apt to be published for opposition without generating confusion within users. The applicant considers, following the previous order of ideas, the USPTO mustn?t consider the refusals stated in the previous Office Action as such and, therefore, proceed for publication

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Fruits, namely, avocados
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: Fruits, namely, avocados; Fruits, namely, unprocessed avocadosClass 031 for Fruits, namely, unprocessed avocados
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Mexico registration number 1965113 registered 10/23/2018 with a renewal date of __________ and an expiration date of 10/23/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-189203149185-112917886_._MAYA_IMPI.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

ADDITIONAL STATEMENTS
Color Claim
The color(s) green, yellow, red, white and black is/are claimed as a feature of the mark.

Description of mark
The mark consists of three expanding half circle patterns. The first inner most half circle pattern is a red arch with upper corners that are softened and with an inner yellow zigzagging line with a white outline. The second middle half circle pattern has six green trapezoid shapes each with an inner yellow trapezoid shape with a white outline with an inner lined triangle with a white outline. In the middle of the second half circle pattern there is a green shape with its bottom corners softened and its upper corners reversed with an inner white circle with a yellow outer lined circle. The third outer half circle pattern from contains fifteen shapes. They are lined in the following order on each side of the center green rectangle from the bottom left or bottom right to the center green rectangle, namely, two green, two yellow, two green, and one yellowed shape, and each with a red triangle inside with a white outline except the center green rectangle which has a red rectangle center with a white outline. Under the three expanding half circle patterns is the black stylized word "MAYA" with capital letters.

Translation
The English translation of MAYA in the mark is The pre-columbian culture known as MAYA.


Miscellaneous Statement


Original PDF file:
mis-189203149185-20190709112917886811_._MAYA_response_oa.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-189203149185-20190709112917886811_._76385392__1_.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-189203149185-20190709112917886811_._86497865__1_.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-189203149185-20190709112917886811_._79209119__1_.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-189203149185-20190709112917886811_._75724577__1_.pdf
Converted PDF file(s) ( 4 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Original PDF file:
mis-189203149185-20190709112917886811_._76629060__2_.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3

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: /MARIO GALLARDO PRECIADO/      Date: 07/09/2019
Signatory's Name: MARIO GALLARDO PRECIADO
Signatory's Position: Corporate officer

Response Signature
Signature: /MARIO GALLARDO PRECIADO/     Date: 07/09/2019
Signatory's Name: MARIO GALLARDO PRECIADO
Signatory's Position: Corporate Officer

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88169289
Internet Transmission Date: Tue Jul 09 12:00:49 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190709120049
237243-88169289-62031c033cf8f5e5e67b32bc
72d3f97b1af66ba8cec35ee6f5f353a607188c47
-N/A-N/A-20190709112917886811