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. 88262718 ANNEX (Stylized and/or with Design, see http://uspto.report/TM/88262718/mark.png) has been amended as follows:

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

Applicant has amended the description of goods and services to delete goods and services associated with classes 3, 8, 16, 18, 21, 24, 25, 38, 41, 42 and 42.  As these classes were the only classes that had commonality associated with the cited marks, including the prior pending application, Applicant submits that the rejection underTrademark Act Section 2(d) for likelihood of confusion is now moot.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 025 for clothing namely: t-shirts, hoodies, long sleeve shirts, socks, underwear, pants, jeans, shorts, rain jackets, dresses, tank tops; bags, namely, duffle bags, travelling bags, messenger bags and women's purses; wallets and wallet chains; hats, namely, men's and ladies hats, ball caps, tuques; alcohol flasks; shaving accessories, namely, shaving razors, shaving bags, shaving brushes and shaving soaps; Bathrobes; Household linens, namely, bed sheets, pillowcases, bath and beach towels, face cloths, duvet covers; hotel accommodation services; hotel reservations; travel agency services; travel guide services; bar and restaurant services; take-out and delivery restaurant services; catering services; event planning services; organization of promotional events, namely, film screenings and concerts; provision of franchising advice in the field of hospitality services, namely, hotels, bars and restaurants; offering technical assistance in the establishment and operation of hotel, resort and bar and restaurant franchises; operation of a retail clothing store; operation of a retail store selling records, posters, CD's, DVDs, and shaving accessories; music and video production services; web design services; providing marketing consulting in the field of social media; business marketing consulting services; barber shop and hair dressing services; Provision of information relating to entertainment and popular culture, namely, sports, music, fashion, social commentary, politics, film, television and the arts via the Internet and in print publications; Advertising, marketing, publicity and promotional services for others through online communications, events, and printed material, including magazines; Promoting artists via electronic and printed periodical publications; Promoting the concerts of others through online communications, events, and printed material, including magazines; Promoting the parties and special events of others through online communications, events, and printed material, including magazines; Broadcasting and transmission of television and radio programs and entertainment media content, namely, interviews, concerts, movies, short films, documentaries, scripted content, and music videos, over the internet; Management and operation of on-line discussion groups and forums; Online radio, cable, video and television broadcasting; Mobile media and entertainment services in the nature of electronic transmission of entertainment media content, namely, interviews, concerts, movies, short films, documentaries, scripted content, and music videos over handheld mobile electronic devices; Broadcasting services and provision of telecommunication access to films and television programs provided via a video-on-demand service; Broadcasting services and provision of telecommunication access to video and audio content provided via a video-on-demand service via the Internet; Providing on-line communications links which transfer the website user to other local and global web pages

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 025 ) for Special event planning for business purposes; organization of events namely film screenings and concerts for promotional purposes; provision of franchising advice in the field of hospitality services namely hotels, bars and restaurants; offering technical assistance, namely, business consulting in the establishment and operation of hotel, resort and bar and restaurant franchises; retail clothing store; retail store services featuring records, posters, CDs, DVDs, and shaving accessories; providing marketing consulting in the field of social media; business marketing consulting services; advertising, marketing, publicity and promotional services for others through online communications, events, and printed material, including magazines; marketing services, namely, promoting artists via electronic and printed periodical publications; promoting the concerts of others through online communications, events, and printed material, including magazines; Promoting the parties and special events of others through online communications, events, and printed material, including magazines
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 [ Canada application number 1910439 filed 07/19/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 039 for travel agency services, namely, making reservations and bookings for transportation; travel guide services
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 [ Canada application number 1910439 filed 07/19/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 043 for hotel accommodation services; hotel reservations; bar and restaurant services; take-out and delivery restaurant services; catering services
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 [ Canada application number 1910439 filed 07/19/2018]. 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.

The applicant's current attorney information: Heidi L. Eisenhut. Heidi L. Eisenhut of LOZA & LOZA, LLP, is located at

      305 N. SECOND AVE., #127
      UPLAND, California 91786
      US
The docket/reference number is MOFF-202.

The phone number is 562-305-5464.

The fax number is 562-305-5464.

The email address is heidi-pto@lozaip.com

The applicants proposed attorney information: Heidi L. Eisenhut. Heidi L. Eisenhut of LOZA & LOZA, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      305 N. SECOND AVE., #127
      UPLAND, California 91786
      United States
The docket/reference number is MOFF-202.

The phone number is 562-305-5464.

The fax number is 562-305-5464.

The email address is heidi-pto@lozaip.com

Heidi L. Eisenhut 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: HEIDI L. EISENHUT. HEIDI L. EISENHUT of LOZA & LOZA, LLP, is located at

      305 N. SECOND AVE., #127
      UPLAND, California 91786
      US
The docket/reference number is MOFF-202.

The phone number is 562-305-5464.

The fax number is 562-305-5464.

The email address is heidi-pto@lozaip.com

The applicants proposed correspondence information: Heidi L. Eisenhut. Heidi L. Eisenhut of LOZA & LOZA, LLP, is located at

      305 N. SECOND AVE., #127
      UPLAND, California 91786
      United States
The docket/reference number is MOFF-202.

The phone number is 562-305-5464.

The fax number is 562-305-5464.

The email address is heidi-pto@lozaip.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
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.


FEE(S)
Fee(s) in the amount of $550 is being submitted.

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: /Heidi Eisenhut/      Date: 10/02/2019
Signatory's Name: Heidi Eisenhut
Signatory's Position: Attorney of record, CA bar member
Signatory's Phone Number: 562-305-5464


Response Signature
Signature: /Heidi Eisenhut/     Date: 10/02/2019
Signatory's Name: Heidi Eisenhut
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 562-305-5464

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:    HEIDI L. EISENHUT
   LOZA & LOZA, LLP
   
   305 N. SECOND AVE., #127
   UPLAND, California 91786
Mailing Address:    Heidi L. Eisenhut
   LOZA & LOZA, LLP
   305 N. SECOND AVE., #127
   UPLAND, California 91786
        
RAM Sale Number: 88262718
RAM Accounting Date: 10/02/2019
        
Serial Number: 88262718
Internet Transmission Date: Wed Oct 02 18:14:43 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019100218144390
6686-88262718-610d3d83ae4a8458334dddbae3
1f6cf3b8866f31915966a9d29d8d706e9ebe108f
-CC-14423106-20191002180304436630