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. 88214836 SOUND(Standard Characters, see http://uspto.report/TM/88214836/mark.png) has been amended as follows:

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

Applicant has carefully reviewed the Office Action issued March 4, 2019 in connection with Applicant’s Application for SOUND, U.S. Application Serial No. 88214836, for which the Examiner issued an objection on various grounds, namely: (1) likelihood of confusion under Trademark Act Section 2(d)  as against U.S. Registration No. 5377952 for SOUND SUSTAINABLE FARMS; (2) Varietal Name Refusal under Trademark Act Sections 1, 2, 4 & 5; and (3) Identification / Classification of Goods and Services. 

 

With respect to objection (1), the Examiner indicates that Applicant may overcome the likelihood of confusion rejection by deleting “plant seeds” and “genetically modified agricultural seeds for planting” from International Class 31 as originally drafted. Applicant has amended the Application in the Classification Amendment Section deleting “plant seeds” and “genetically modified agricultural seeds for planting” from the Application. This also effectively deletes Class 31 as amended by the Examiner.

 

Regarding objection (2), the Examiner states that the objection under the Varietal Name Refusal may also be cured by deleting “plant seeds” and “genetically modified agricultural seeds for planting” from the Application. Applicant’s deletion of the subject claims cures this objection. Applicant notes that by deleting the subject claims, the Examiner’s request for information whether (a) SOUND has ever been used or will be used as a varietal or cultivar name; and (b) whether SOUND has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection is null.

 

With respect to objection (3), Applicant makes the required amendments in the appropriate section herein.

 

Applicant believes the above-referenced deletions and amendments resolve the related objections under Trademark Act Section 2(d) and the Varietal Name Refusal under Section 1, 2, & 45 of the Act. Please contact the undersigned Attorney of Record with any questions regarding these amendments.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 031 for Plant hormones (phytohormones); plant growth regulating preparations; biostimulants being plant hormones; biotechnologically-formed genes, microbes and enzymes for use in the production of agricultural seeds to enhance plants' growth therefrom; plant seeds; genetically modified agricultural seeds for planting; plant engineering; plant breeding

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Plant nutrients; plant food; plant nutrition preparations; artificial plant cultivation soil; plant nutrition preparations and plant growth simulants; substances for regulating plant growth; plant growth regulators for agricultural purposes; plant growth nutrients agricultural use
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: Plant nutrients; plant food; plant nutrition preparations; artificial plant cultivation soil; plant nutrition preparations and plant growth simulants; substances for regulating plant growth; plant growth regulators for agricultural purposes; plant growth nutrients agricultural use; plant growth nutrients for agricultural use; Plant hormones (phytohormones); plant growth regulating preparations; biostimulants being plant hormones; biotechnologically-formed genes, microbes and enzymes for use in the production of agricultural seeds to enhance plants' growth therefromClass 001 for Plant nutrients; plant food; plant nutrition preparations; artificial plant cultivation soil; plant nutrition preparations and plant growth simulants; substances for regulating plant growth; plant growth regulators for agricultural purposes; plant growth nutrients for agricultural use; Plant hormones (phytohormones); plant growth regulating preparations; biostimulants being plant hormones; biotechnologically-formed genes, microbes and enzymes for use in the production of agricultural seeds to enhance plants' growth therefrom
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 042 for Plant engineering
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 044 for Plant breeding
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.

FEE(S)
Fee(s) in the amount of $550 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: /Julia M. Chester/     Date: 06/23/2019
Signatory's Name: Julia M. Chester
Signatory's Position: Attorney of Record, Texas bar member

Signatory's Phone Number: 214-981-3300

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent 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 U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 88214836
RAM Accounting Date: 06/24/2019
        
Serial Number: 88214836
Internet Transmission Date: Sun Jun 23 17:48:47 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190623174847778
373-88214836-62057178a576b966368bf4042a8
7985453a9fe22cd7c6f2c4a59912a13616581c-D
A-7561-20190623173755007682