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. 88264544 PHILTER (Stylized and/or with Design, see http://uspto.report/TM/88264544/mark.png) has been amended as follows:

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

SECTION 2(e)(1) MERELY DESCRIPTIVE The Office alleges the applied for mark is merely descriptive or even generic. First, it provides that deliberate misspelling of generic words are not registerable by citing case law. Second, it provides that stylized letters of generic words are not registerable again citing case law. However, none of the cases are controlling since the mark is both a deliberate misspelling and a stylized (actually design elements) included. This is because marks distinctiveness fall on a continuum so combining two discrete categories of marks should not done to make a refusal. Hence the mark should be judged in its entirety to determine any distinctiveness. Also further, the alleged stylized reversed "R" is a design element rather than a mere stylization. TMEP 1213.05(g) and TMEP 1213.05(g)(i) may be informative distinguishing stylized letters from design elements replacing letters. However again, they do not address both the deliberate misspelling and the design elements. For example, would it make sense to require a disclaimer for the word "Philter" being a meaningless word? Also importantly, this is a logo mark that is specific to the exact shape of any letters, forward or backward; and any accompanying specimen will be required to be exactly like the logo. Regarding the website use of Philter or Philter with the reversed R, the offending use of these terms is being corrected to reflect that each are a trademark and thus a brand. IDENTIFICATION OF PARTICULAR GOODS INDEFINITE Applicant believes that the good(s) described and being sold in the marketplace belong in Class 34 considering their close association with electronic smoking devices. Indeed, Applicant?s representative has tried via email to stress this point via TM Manual Suggest channel of communications. However, notwithstanding, in order to expedite the matter, Applicant wishes to amend the goods as suggested: Personal, standalone air filtering units for filtering tobacco smoke, cannibis smoke or vapor exhaled directly into the devices, which falls into Class 11, in order to expedite.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 034 for Personal air filters for filtering exhaled smoke or vapor:, namely, that produced by electronic cigarettes

Applicant hereby adds the following class of goods/services to the application:
New: Class 011 (Original Class: 034 ) for Personal, standalone air filtering units for filtering tobacco smoke, cannibis smoke or vapor exhaled directly into the devices
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: Timothy W. Fitzwilliam. Timothy W. Fitzwilliam of LAW OFC. OF TW FITZWILLIAM, is located at

      #221
      5666 LA JOLLA BLVD.
      LA JOLLA, California 92037
      US
The docket/reference number is PHT.303US.

The phone number is 949-231-0434.

The email address is fitzwilliam.esq@gmail.com

The applicants proposed attorney information: Timothy W. Fitzwilliam. Timothy W. Fitzwilliam of LAW OFC. OF TW FITZWILLIAM, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      #221
      5666 LA JOLLA BLVD.
      LA JOLLA, California 92037
      United States
The docket/reference number is PHT.303US.

The phone number is 949-231-0434.

The email address is fitzwilliam.esq@gmail.com

Timothy W. Fitzwilliam 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: TIMOTHY W. FITZWILLIAM. TIMOTHY W. FITZWILLIAM of LAW OFC. OF TW FITZWILLIAM, is located at

      #221
      5666 LA JOLLA BLVD.
      LA JOLLA, California 92037
      US
The docket/reference number is PHT.303US.

The phone number is 949-231-0434.

The email address is fitzwilliam.esq@gmail.com

The applicants proposed correspondence information: Timothy W. Fitzwilliam. Timothy W. Fitzwilliam of LAW OFC. OF TW FITZWILLIAM, is located at

      #221
      5666 LA JOLLA BLVD.
      LA JOLLA, California 92037
      United States
The docket/reference number is PHT.303US.

The phone number is 949-231-0434.

The email address is fitzwilliam.esq@gmail.com

SIGNATURE(S)
Response Signature
Signature: /twtfitzwilliam/     Date: 09/24/2019
Signatory's Name: Timothy W. Fitzwilliam
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 9492310434

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:    TIMOTHY W. FITZWILLIAM
   LAW OFC. OF TW FITZWILLIAM
   #221
   5666 LA JOLLA BLVD.
   LA JOLLA, California 92037
Mailing Address:    Timothy W. Fitzwilliam
   LAW OFC. OF TW FITZWILLIAM
   #221
   5666 LA JOLLA BLVD.
   LA JOLLA, California 92037
        
Serial Number: 88264544
Internet Transmission Date: Tue Sep 24 22:30:10 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190924223010585
307-88264544-6101b2185f39bddc753a6b6ffd3
dae6addc80315610818734377cc2af1eb29d1-N/
A-N/A-20190924221633814363