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. 88258762 BOUGIE(Standard Characters, see http://uspto.report/TM/88258762/mark.png) has been amended as follows:

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

Response

          The March 26, 2019 Office Action has been reviewed in detail.  In short, the present application was initially refused registration on the basis of: (1) an alleged potential likelihood of confusion with pending U.S. Appl. No. 86/782,080; (2) the identification of goods; and (3) submission of the foreign registration certificate.  In view thereof, Applicant offers the following in response:

 

Prior Pending Application

          The present application was initially refused registration in view of a potential likelihood of confusion with U.S. Appl. No. 86/782,080 for “BOUJIS” for use in connection with “wines, spirits, prepared alcoholic cocktails, hard cider, sherry, port, and fortified wines; alcoholic beverages other than beers”.  In response, Applicant respectfully requests suspension of the present application pending final disposition of the ‘080 Application.

          Applicant respectfully reserves the right to address the likelihood of confusion refusal under Section 2(d), and any other issues in the Office Action, at a later date.

 

Identification of Goods

          Applicant has amended the identification of goods and services as suggested in the Office Action.

 

Foreign Registration

          The Office Action requests submission of “a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.”  In response, Applicant herewith submits a copy of parent EUTM Registration No. 018007969, and intends to rely on the same for purposes of registering the present application under Section 44(e) of the Lanham Act.

 

Conclusion

          In view of the request for suspension, amendments to the identification of goods, and in view of submitting a certified copy of the parent foreign registration, Applicant respectfully requests reconsideration and suspension of the present application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 033 for Alcoholic beverages; spirits and liquors; pre-mixed alcoholic beverages; wines, sparkling wines; any of the aforesaid goods also provided in a can
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3366004 filed 01/10/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Alcoholic beverages; Alcoholic beverages, not including beer; spirits and liquors; pre-mixed alcoholic beverages; pre-mixed alcoholic beverages, other than beer-based; wines, sparkling wines; any of the aforesaid goods also provided in a canClass 033 for Alcoholic beverages, not including beer; spirits and liquors; pre-mixed alcoholic beverages, other than beer-based; wines, sparkling wines; any of the aforesaid goods also provided in a can
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3366004 filed 01/10/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018007969 registered 05/25/2019 with a renewal date of __________ and an expiration date of 01/10/2029 ], 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:
FRU0-762147135-183953647_._55908_Certified_Registration_EUTM_018007969.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Scott M. Lowry. Scott M. Lowry of LOWRY BLIXSETH LLP, is located at

      23632 CALABASAS ROAD, STE. 201
      CALABASAS, California 91302
      US
The docket/reference number is FORR-55908.

The phone number is 818-584-6460.

The fax number is 818-574-6026.

The email address is scott@lawlb.com

The applicants proposed attorney information: Scott M. Lowry. Scott M. Lowry of LOWRY BLIXSETH APC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      23632 CALABASAS ROAD, STE. 201
      CALABASAS, California 91302
      United States
The docket/reference number is FORR-55908.

The phone number is 818-584-6460.

The fax number is 818-574-6026.

The email address is scott@lawlb.com

Scott M. Lowry 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: SCOTT M. LOWRY. SCOTT M. LOWRY of LOWRY BLIXSETH LLP, is located at

      23632 CALABASAS ROAD, STE. 201
      CALABASAS, California 91302
      US
The docket/reference number is FORR-55908.

The phone number is 818-584-6460.

The fax number is 818-574-6026.

The email address is scott@lawlb.com

The applicants proposed correspondence information: Scott M. Lowry. Scott M. Lowry of LOWRY BLIXSETH APC, is located at

      23632 CALABASAS ROAD, STE. 201
      CALABASAS, California 91302
      United States
The docket/reference number is FORR-55908.

The phone number is 818-584-6460.

The fax number is 818-574-6026.

The email address is scott@lawlb.com

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: /Scott M. Lowry/      Date: 09/26/2019
Signatory's Name: Scott M. Lowry
Signatory's Position: Attorney of Record, California bar member
Signatory's Phone Number: 818-584-6460


Response Signature
Signature: /Scott M. Lowry/     Date: 09/26/2019
Signatory's Name: Scott M. Lowry
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 818-584-6460

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:    SCOTT M. LOWRY
   LOWRY BLIXSETH LLP
   
   23632 CALABASAS ROAD, STE. 201
   CALABASAS, California 91302
Mailing Address:    Scott M. Lowry
   LOWRY BLIXSETH APC
   23632 CALABASAS ROAD, STE. 201
   CALABASAS, California 91302
        
Serial Number: 88258762
Internet Transmission Date: Thu Sep 26 19:44:25 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190926194425983
291-88258762-610a569ef631c433f7eac2d6497
1e617ae985ba7fd6b8cc7fdf47e428158e44b8b-
N/A-N/A-20190926183953647135