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. 88256475 FRUIT & VEGGIE BLENDERS FOREVER YOUNG(Standard Characters, see http://uspto.report/TM/88256475/mark.png) has been amended as follows:

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

1 Michael Engel Trademark Examining Attorney Law Office 107 Unites States Patent and Trademark Office RE: Serial No: 88256475 Mark: FRUIT & VEGGIE BLENDERS FOREVER YOUNG Applicant: Matosantos Commercial Corp. Office Action of: February 6, 2019 APPLICANT?S RESPONSE TO OFFICE ACTION I. INTRODUCTION The following is Applicant?s, Matosantos Commercial Corp. (hereinafter Applicant), response by Counsel to the Office Action issued on February 6, 2019, by Examining Attorney Michael Engel. Registration of the proposed trademark ?FRUIT & VEGGIE BLENDERS FOREVER YOUNG? was refused pursuant to Trademark Act Sections 1 and 45, 15 U.S.C. ?1051, 1127; 37 C.F.R. ??2.34(a)(1)(iv), 2.56(a); TMEP ?807.01, on the grounds that allegedly Applicant seeks registration of more than one mark. This, since according to the Examining Officer the elements of the mark, as shown in the filed specimen, appear spatially separated that they seem to be separate and distinct marks. Nevertheless, after carefully considering the particular circumstances of this case, Applicant respectfully submits that the mark, as shown in the specimen, does not create the impression of two different marks. On the contrary, as used in commerce, the mark ?FRUIT & VEGGIE BLENDERS FOREVER YOUNG? is seen as a unitary mark 2 and this is how consumers perceive it. As such, Applicant very respectfully requests the Examining Attorney to reconsider his refusal and approve the mark for registration. II. GENERAL ARGUMENT IN FAVOR OF REGISTRATION THE MARK ?FRUIT & VEGGIE BLENDERS FOREVER YOUNG? AS USED IN COMMERCE CREATES ONE SINGLE COMMERCIAL IMPRESSION AND AS SUCH THIS IS HOW CONSUMERS WILL PERCEIVE IT In this case, the Examining Attorney alleges that according to the submitted specimen, Applicant seeks registration for more than one mark. This, since according to the Examining Attorney the elements ?FRUIT & VEGGIE BLENDERS? and ?FOREVER YOUNG?, as shown in the submitted specimen, are separated to such a degree that they appear to be separate and distinct marks. In support of this conclusion, the Examining Attorney cites several cases, all of which differ from Applicant?s case. For example, in In Re Hayes, 62 U.S.P.Q. 2d 1443, the applicant in said case wished to register a mark that was designed to vary in patterns and colors and the description of the mark reflected said variations. As such, in said case the decision was based on applicant?s description of the mark since it described more than one mark. Further, said case cites In Re International Flavors & Fragrances, Inc, 183 F.3d 1361, which was also cited by the Examining Attorney as basis for the refusal. In this particular case, applicant seeked to register the mark ?LIVING XXXX FLAVOR?, in which the ?XXXX? were to be substituted by different designations, such as ?MINT?, ?FLOWERS?, ?RASBERRY?, among others. Therefore, this cased analyzed what are considered ?phantom: marks and if said type of marks violate the ?one mark per 3 registration? requirement under the Lanham Act. As such, in this case it was also clear that applicant intended to register more than one mark in its application However, this is not the case for Applicant. Here, Applicant intends to register only one mark, the word mark ?FRUIT & VEGGIE BLENDER FOREVER YOUNG?, in which its description does not allow for any other variation of it. As expressed by the Examining Attorney, a mark combining separate elements is registrable only if it is a single unitary mark and engenders a unique and distinct commercial impression. Applicant?s mark is composed of the unitary mark ?FRUIT & VEGGIE BLENDERS FOREVER YOUNG?, and when consumers see Applicant?s products in commerce, the mark engenders a unique a distinct commercial impression. Different from this, are the cases cited by the Examining Attorney in the Office Action. For example, in In Re Supreme Steel Framing Sys. Ass?n Inc., 105 USPQ2d 1385, the court found that applicant?s mark was composed of two different marks. Here, the court considered several factors, from the fact that the terms, as shown in the specimen, were written in different fonts, contained different colors, and had other terms that intervened between the applied for mark. Namely, the court analyzed the fact that the term ?SSFSA? appeared along with other wording encapsulate inside of a blue and grey design, while the phrase ?CERTIFIED CODE COMPLIANT? appeared in a much larger size in the middle of the specimen inside of a gold circle, and with the term ?CODE? inside a red-bordered white ribbon across the center. As such, in this case, the court analyzed many elements and not just the spacing between the term in order to conclude that the mark, as shown in the specimen, appeared to be two different marks. 4 Contrary to what is alleged by the Examining Attorney in the Office Action, courts have established that the position of a symbol or word in a package does not determine, by itself, whether it functions or not as a mark. See V?ase Johnston Foods, Inc. v. Carnation Co., 159 U.S.P.Q. 624 (T.T.A.B. 1968). As such, in this case, Applicant very respectfully considers that in this case, the terms ?FRUIT & VEGGIE BLENDERS? and ?FOREVER YOUNG? appear sufficiently in close proximity to each other in the package shown, and as such it can be concluded that they make up one unitary commercial impression. For example, in this case, both phrases appear on the top part of the packaging, have similar font and are not encapsulated inside any shapes. As such, they do not have different commercial impressions, but rather make up one commercial impression. In conclusion, when evaluating the particular circumstances of this case, it must be concluded that the cited case law differs from the case at hand and as such, should not be considered. Further, in none of the cited case law does the Board or the Court conclude that the mere fact that two terms appear separated by some space automatically mean that they constitute more than one mark. On the contrary, there are several more elements that should be considered. In that sense, Applicant very respectfully submits that the filed specimen in this case should be acceptable since both terms, appear in sufficient proximity to each other as to create a single unique commercial impression. III. CONCLUSION The preceding analysis and summary of legal precedent strongly indicates that Applicant is not intending to register two different marks, but rather one unitary mark composed of the terms ?FRUIT & VEGGIE BLENDERS FOREVER YOUNG?. Further, in 5 this case Applicant believes that the terms ?FRUIT & VEGGIE BLENDERS? and ?FOREVER YOUNG? appear in sufficient proximity to each other, as to create one unitary distinct commercial impression. Wherefore, in light of the foregoing circumstances, Applicant respectfully requests the Examining Attorney to approve the mark for registration. Respectfully submitted, /Adriana T. Amadeo/ Adriana T. Amadeo Samuel F. Pamias Hoglund & Pamias, P.S.C. 256 Eleanor Roosevelt San Juan, PR 00918 Tel. (787)772-9200 E-mail: adriana@hhoglund.com

EVIDENCE
Evidence in the nature of Applicant's arguments in support of registration. has been attached.
Original PDF file:
evi_6722425479-20190806164527453929_._Response_to_OA.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

The applicant's current attorney information: Samuel F. Pamias. Samuel F. Pamias of HOGLUND & PAMIAS, P.S.C., is located at

      256 ELEANOR ROOSEVELT ST.
      SAN JUAN, Puerto Rico 00918
      US
The docket/reference number is MACO 6800.

The phone number is 787-772-9200.

The fax number is 787-772-9533.

The email address is ip@hhoglund.com

The applicants proposed attorney information: Samuel F. Pamias. Other appointed attorneys are Adriana Amadeo. Samuel F. Pamias of HOGLUND & PAMIAS, P.S.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

      256 ELEANOR ROOSEVELT ST.
      SAN JUAN, 00918
      Puerto Rico
The docket/reference number is MACO 6800.

The phone number is 787-772-9200.

The fax number is 787-772-9533.

The email address is ip@hhoglund.com

Samuel F. Pamias submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: SAMUEL F. PAMIAS. SAMUEL F. PAMIAS of HOGLUND & PAMIAS, P.S.C., is located at

      256 ELEANOR ROOSEVELT ST.
      SAN JUAN, Puerto Rico 00918
      US
The docket/reference number is MACO 6800.

The phone number is 787-772-9200.

The fax number is 787-772-9533.

The email address is ip@hhoglund.com; samuel@hhoglund.com; aileen@hhoglund.com; nahomy@hhoglund.com; adriana@hhoglund.com

The applicants proposed correspondence information: Samuel F. Pamias. Samuel F. Pamias of HOGLUND & PAMIAS, P.S.C., is located at

      256 ELEANOR ROOSEVELT ST.
      SAN JUAN, 00918
      Puerto Rico
The docket/reference number is MACO 6800.

The phone number is 787-772-9200.

The fax number is 787-772-9533.

The email address is ip@hhoglund.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "FRUIT & VEGGIE" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Samuel F. Pamias/     Date: 08/06/2019
Signatory's Name: Samuel F. Pamias
Signatory's Position: Attorney of Record, Puerto Rico Bar Member

Signatory's Phone Number: 7877729200

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:    SAMUEL F. PAMIAS
   HOGLUND & PAMIAS, P.S.C.
   
   256 ELEANOR ROOSEVELT ST.
   SAN JUAN, Puerto Rico 00918
Mailing Address:    Samuel F. Pamias
   HOGLUND & PAMIAS, P.S.C.
   256 ELEANOR ROOSEVELT ST.
   SAN JUAN, 00918
        
Serial Number: 88256475
Internet Transmission Date: Tue Aug 06 16:54:42 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019080616544225
8001-88256475-6107f43ed2146365f47ce84a2c
50d850d1814ed96e0759619dc7148dc7d5259d3-
N/A-N/A-20190806164527453929