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. 88212862 INGENUITY(Standard Characters, see http://uspto.report/TM/88212862/mark.png) has been amended as follows:

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

Applicant disagrees that the marks in the cited registrations - being for differently and non-traditionally spelled marks with apparently dissimilar connotations and additional diacritical markings and a design element -- are confusingly similar to its applied-for mark, but for practical reasons hereby amends its application to delete some goods and to move others, adding a new Class 30 for the latter, consistent with the Examining Attorney's guidance.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Yogurt; yogurt-based snack foods, namely, yogurt-covered bars, nuts, pretzels, and fruit; yogurt drinks; freeze-dried fruit and yogurt snacks; yogurt-based snack bars; yogurt-based chips; non-dairy yogurt; nut-based yogurt substitutes; milk; flavored milk; cheese; cheese substitutes; cottage cheese; sour cream; cream cheese; cream; non-dairy-based creamers for beverages; soy milk; chickpea milk; pea milk; rice milk; almond milk; algae milk; coconut milk; hemp milk; peanut milk; cheese sticks in the nature of cheese sold in stick form; processed cheese; egg substitutes; applesauce; vegetable-based snack foods; puffed vegetable snacks; snack food primarily consisting of fruits and nuts; fruit-based snack foods; fruit and nut butter combination snack foods; fruit-based raw food bars; vegetable-based raw food bars; soy-based food bars; processed seafood-based food bars; fruit-based food snacks also containing vegetables and coconut milk for babies and children; freeze-dried fruits and vegetables in the form of a chip; fruit purees; vegetable purees; combined fruit and vegetable purees; preserved fruit; processed fruit sold in small containers cups; canned diced fruit; hummus and hummus chick pea paste; vegetable-based snack foods; nut-based food bars; frozen hand-held meals consisting primarily of meat, fish, poultry, or vegetables; prepared hand-held meals consisting primarily of meat, fish, poultry or vegetables; packaged hand-held meals consisting primarily of meat, fish, poultry, or vegetables; meat-based snack foods; meat-based food bars; jerky; fish purees; nut butters; pizza nuggets in the nature of frozen breaded chicken nuggets with pizza flavoring; chicken nuggets; hot dog nuggets in the nature of hot dog sausages; chick pea-based food bars
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: Yogurt; yogurt-based snack foods, namely, yogurt-covered bars, nuts, pretzels, and fruit; yogurt drinks; freeze-dried fruit and yogurt snacks; yogurt-based snack bars; yogurt-based chips; non-dairy yogurt; nut-based yogurt substitutes; milk; flavored milk; cheese; cheese substitutes; cottage cheese; sour cream; cream cheese; cream; non-dairy-based creamers for beverages; soy milk; chickpea milk; pea milk; rice milk; almond milk; algae milk; coconut milk; hemp milk; peanut milk; cheese sticks in the nature of cheese sold in stick form; processed cheese; egg substitutes; vegetable-based snack foods; applesauce; puffed vegetable snacks; snack food primarily consisting of fruits and nuts; fruit-based snack foods; fruit and nut butter combination snack foods; fruit-based raw food bars; vegetable-based raw food bars; soy-based food bars; processed seafood-based food bars; fruit-based food snacks also containing vegetables and coconut milk for babies and children; freeze-dried fruits and vegetables in the form of a chip; fruit purees; vegetable purees; combined fruit and vegetable purees; preserved fruit; processed fruit sold in small containers cups; canned diced fruit; hummus and hummus chick pea paste; vegetable-based snack foods; nut-based food bars; nut butters; chick pea-based food bars; frozen hand-held meals consisting primarily of meat, fish, poultry, or vegetables; prepared hand-held meals consisting primarily of meat, fish, poultry or vegetables; packaged hand-held meals consisting primarily of meat, fish, poultry, or vegetables; meat-based snack foods; meat-based food bars; jerky; fish purees; pizza nuggets in the nature of frozen breaded chicken nuggets with pizza flavoring; chicken nuggets; hot dog nuggets in the nature of hot dog sausagesClass 029 for Yogurt; yogurt drinks; freeze-dried fruit and yogurt snacks; yogurt-based snack bars; yogurt-based chips; non-dairy yogurt; nut-based yogurt substitutes; milk; flavored milk; cheese; cheese substitutes; cottage cheese; sour cream; cream cheese; cream; non-dairy-based creamers for beverages; soy milk; chickpea milk; pea milk; rice milk; almond milk; algae milk; coconut milk; hemp milk; peanut milk; cheese sticks in the nature of cheese sold in stick form; processed cheese; egg substitutes; vegetable-based snack foods; puffed vegetable snacks; snack food primarily consisting of fruits and nuts; fruit-based snack foods; fruit and nut butter combination snack foods; fruit-based raw food bars; vegetable-based raw food bars; soy-based food bars; processed seafood-based food bars; fruit-based food snacks also containing vegetables and coconut milk for babies and children; freeze-dried fruits and vegetables in the form of a chip; fruit purees; vegetable purees; combined fruit and vegetable purees; preserved fruit; processed fruit sold in small containers cups; canned diced fruit; hummus and hummus chick pea paste; vegetable-based snack foods; nut-based food bars; nut butters; chick pea-based food bars
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 hereby adds the following class of goods/services to the application:
New: Class 030 for Yogurt-based snack foods, namely, yogurt-covered bars, nuts, pretzels, and fruit; applesauce
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.

The applicant's current attorney information: John C. Baum. John C. Baum of Owen, Wickersham & Erickson, P.C., is located at

      455 Market Street, Suite 1910
      San Francisco, California 94105
      US
The docket/reference number is INGEN-00001.

The phone number is 415-882-3200.

The fax number is 415-882-3232.

The email address is tmparalegal3@owe.com

The applicants proposed attorney information: John C. Baum. Other appointed attorneys are Gregory N. Owen, Melville Owen, Lawrence G. Townsend, Linda Joy Kattwinkel, Kathleen E. Letourneau, Spencer F. Owen, Erin M. Clarke. John C. Baum of Owen, Wickersham & Erickson, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      455 Market Street, Suite 1910
      San Francisco, California 94105
      United States
The docket/reference number is INGEN-00001.

The phone number is 415-882-3200.

The fax number is 415-882-3232.

The email address is tmparalegal3@owe.com

John C. Baum 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.
The applicant's current correspondence information: John C. Baum. John C. Baum of Owen, Wickersham & Erickson, P.C., is located at

      455 Market Street, Suite 1910
      San Francisco, California 94105
      US
The docket/reference number is INGEN-00001.

The phone number is 415-882-3200.

The fax number is 415-882-3232.

The email address is tmparalegal3@owe.com; jcbaum@owe.com

The applicants proposed correspondence information: John C. Baum. John C. Baum of Owen, Wickersham & Erickson, P.C., is located at

      455 Market Street, Suite 1910
      San Francisco, California 94105
      United States
The docket/reference number is INGEN-00001.

The phone number is 415-882-3200.

The fax number is 415-882-3232.

The email address is tmparalegal3@owe.com; jcbaum@owe.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /John C. Baum/     Date: 09/05/2019
Signatory's Name: John C. Baum
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 415-882-3200

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:    John C. Baum
   Owen, Wickersham & Erickson, P.C.
   
   455 Market Street, Suite 1910
   San Francisco, California 94105
Mailing Address:    John C. Baum
   Owen, Wickersham & Erickson, P.C.
   455 Market Street, Suite 1910
   San Francisco, California 94105
        
RAM Sale Number: 88212862
RAM Accounting Date: 09/05/2019
        
Serial Number: 88212862
Internet Transmission Date: Thu Sep 05 14:56:22 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190905145622947
591-88212862-610164a81af88f3a1c28cdbdb96
533901a5b4d70c2d83720f61e8bd9aac78392-DA
-55537429-20190905143816943883