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. 88238635 CALI O!(Standard Characters, see http://uspto.report/TM/88238635/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of substantive arguments and exhibits in response to the likelihood of confusion refusal and in support of registration has been attached.
Original PDF file:
evi_19821116034-20190920144652347012_._CALI_O__-_O.A._response__2d__ID__and_information_.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_19821116034-20190920144652347012_._Exhibit_1_-_Who_is_Kali____Kali-O_s_Juice_Box.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_19821116034-20190920144652347012_._Exhibit_2_-_specimens_of_use_and_Values___Kali-O_s_Juice_Box.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Flour; preparations made from cereals; confectionery; gum; buns; rice cakes; biscuits; bread; cream puffs; ice cream; iced tea; bars of sweet jellied bean paste; confectionery in jelly form; chocolate products; chocolate; custard; candy; cocoa; cookies; crackers; hot dogs (sausages in a bread roll)
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: Flour; preparations made from cereals; preparations made from cereals, namely, bread, cookies; confectionery; confectionery, namely, confectionery made of sugar, frozen confectionery, snack foods, namely, chocolate; gum; gum, namely, chewing gum, bubble gum; buns; rice cakes; biscuits; bread; cream puffs; ice cream; iced tea; bars of sweet jellied bean paste (Yohkan); bars of sweet jellied bean paste; confectionery in jelly form, namely, fruit jelly candy; confectionery in jelly form; chocolate products, namely, chocolate cakes, chocolate chips, chocolate candies; chocolate products; chocolate; custard; candy; cocoa; cookies; crackers; hot dogs, namely, sausages in a bread roll; hot dogs (sausages in a bread roll)Class 030 for Flour; preparations made from cereals, namely, bread, cookies; confectionery, namely, confectionery made of sugar, frozen confectionery, snack foods, namely, chocolate; gum, namely, chewing gum, bubble gum; buns; rice cakes; biscuits; bread; cream puffs; ice cream; bars of sweet jellied bean paste (Yohkan); confectionery in jelly form, namely, fruit jelly candy; chocolate products, namely, chocolate cakes, chocolate chips, chocolate candies; chocolate; custard; candy; cocoa; cookies; crackers; hot dogs, namely, sausages in a bread roll
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: Boris Umansky. Boris Umansky of LADAS & PARRY LLP, is located at

      SUITE 1600
      224 South Michigan Avenue
      CHICAGO, Illinois 60604
      US
The docket/reference number is 3T18708046.

The phone number is 312-427-1300.

The fax number is 312-427-6663.

The email address is CHIUSTM@LADAS.NET

The applicants proposed attorney information: Boris Umansky. Other appointed attorneys are Burton S. Ehrlich, Richard J. Streit, John P. Luther, Kevin A. Thompson, Hermine Valizadeh, David C. Brezina, and James B. Conte. Boris Umansky of Ladas & Parry 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

      224 S. Michigan Ave., Ste. 1600
      Chicago, Illinois 60604
      United States
The docket/reference number is 3T18708046.

The phone number is 312-427-1300.

The fax number is 312-427-6663.

The email address is CHIUSTM@LADAS.NET

Boris Umansky 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: Boris Umansky. Boris Umansky of LADAS & PARRY LLP, is located at

      SUITE 1600
      224 South Michigan Avenue
      CHICAGO, Illinois 60604
      US
The docket/reference number is 3T18708046.

The phone number is 312-427-1300.

The fax number is 312-427-6663.

The email address is CHIUSTM@LADAS.NET

The applicants proposed correspondence information: Boris Umansky. Boris Umansky of Ladas & Parry LLP, is located at

      224 S. Michigan Ave., Ste. 1600
      Chicago, Illinois 60604
      United States
The docket/reference number is 3T18708046.

The phone number is 312-427-1300.

The fax number is 312-427-6663.

The email address is CHIUSTM@LADAS.NET

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
"CALI O!" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Boris Umansky/     Date: 09/20/2019
Signatory's Name: Boris Umansky
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-427-1300

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:    Boris Umansky
   LADAS & PARRY LLP
   SUITE 1600
   224 South Michigan Avenue
   CHICAGO, Illinois 60604
Mailing Address:    Boris Umansky
   Ladas & Parry LLP
   224 S. Michigan Ave., Ste. 1600
   Chicago, Illinois 60604
        
Serial Number: 88238635
Internet Transmission Date: Fri Sep 20 14:57:44 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201909201457445
32966-88238635-610f05688678fa456e73e1321
39709dfe57b8acff124a78dc8fb362ec3f2182e-
N/A-N/A-20190920144652347012