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. 88266969 MSC(Standard Characters, see http://uspto.report/TM/88266969/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 the Argument/Response to Office Action and Exhibit A - Consent Agreement has been attached.
Original PDF file:
evi_3810410682-20190924114641975343_._Response_to_Office_Action_MSC_88266969.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_3810410682-20190924114641975343_._Exhibit_A.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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals; fish oil for medical purposes; oils (medicinal -); oil (cod liver -); edible fish oils for medical and/or dietary purposes
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: Dietetic food and substances adapted for medical or veterinary use; Dietetic food and beverages adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals; fish oil for medical purposes; oils (medicinal -); medicinal oils; oil (cod liver -); cod liver oil; edible fish oils for medical and/or dietary purposes; edible fish oils for medical and dietary purposesClass 005 for Dietetic food and beverages adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals; fish oil for medical purposes; medicinal oils; cod liver oil; edible fish oils for medical and dietary purposes
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Fish; seafood; food products made with or from fish; salted fish; fish fillets; preserved fish; tinned fish, fishmeal for human consumption; fish extracts; fish spreads; prepared meals, cooked meals and/or chilled meals, containing fish; pickled fish, frozen fish, fish products being fresh, preserved or frozen, canned fish, farmed fish products, prepared meals containing fish; edible oils and fats; snack foods; frozen foods; shrimps; prawns; shellfish; crustaceans; edible seaweed; dried edible seaweed; processed edible seaweed; seaweed extracts for food
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: Fish; Fish, not live; seafood; seafood, not live; food products made with or from fish; food products made with or from fish, namely, fish fillets, smoked fish, fish steak, and fish cakes; salted fish; fish fillets; preserved fish; tinned fish, fishmeal for human consumption; tinned fish; fishmeal for human consumption; fish extracts; prepared meals, cooked meals and/or chilled meals, containing fish; fish spreads; pickled fish, frozen fish, fish products being fresh, preserved or frozen, canned fish, farmed fish products, prepared meals containing fish; prepared meals, cooked meals and frozen meals, consisting primarily of fish; pickled fish; snack foods; frozen fish; frozen foods; preserved fish; shrimps; canned fish; prawns; fish, namely, farmed, not live; shellfish; prepared meals consisting primarily of fish; crustaceans; edible oils and fats; edible seaweed; snack foods, consisting primarily of fish; frozen foods consisting primarily of fish; shrimps, not live; seaweed extracts for food; prawns, not live; shellfish, not live; crustaceans, not live; dried edible seaweed; processed edible seaweedClass 029 for Fish, not live; seafood, not live; food products made with or from fish, namely, fish fillets, smoked fish, fish steak, and fish cakes; salted fish; fish fillets; preserved fish; tinned fish; fishmeal for human consumption; fish extracts; fish spreads; prepared meals, cooked meals and frozen meals, consisting primarily of fish; pickled fish; frozen fish; preserved fish; canned fish; fish, namely, farmed, not live; prepared meals consisting primarily of fish; edible oils and fats; snack foods, consisting primarily of fish; frozen foods consisting primarily of fish; shrimps, not live; prawns, not live; shellfish, not live; crustaceans, not live; dried edible seaweed; processed edible seaweed
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Live fish; live shrimp; live prawns; shellfish; crustaceans; fish food; fresh seaweed; unprocessed edible seaweed
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: Live fish; live shrimp; live prawns; shellfish; live shellfish; crustaceans; live crustaceans; fish food; fresh seaweed; fresh unprocessed seaweed; unprocessed edible seaweed; unprocessed edible seaweed, for human or animal consumptionClass 031 for Live fish; live shrimp; live prawns; live shellfish; live crustaceans; fish food; fresh unprocessed seaweed; unprocessed edible seaweed, for human or animal consumption
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: Douglas N. Masters. Douglas N. Masters of LOEB & LOEB LLP, is located at

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      US
The docket/reference number is 215021-00006.

The phone number is 312-464-3110.

The fax number is 312-464-31111.

The email address is chicagopto@loeb.com

The applicants proposed attorney information: Douglas N. Masters. Other appointed attorneys are all authorized attorneys of Loeb & Loeb LLP. Douglas N. Masters of Loeb & Loeb 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

      Suite 2300
      321 North Clark Street
      Chicago, Illinois 60654
      United States
The docket/reference number is 215021-00006.

The phone number is 312-464-3110.

The fax number is 312-464-31111.

The email address is Trademarks@loeb.com

Douglas N. Masters 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: DOUGLAS N. MASTERS. DOUGLAS N. MASTERS of LOEB & LOEB LLP, is located at

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      US
The docket/reference number is 215021-00006.

The phone number is 312-464-3110.

The fax number is 312-464-31111.

The email address is chicagopto@loeb.com

The applicants proposed correspondence information: Douglas N. Masters. Douglas N. Masters of Loeb & Loeb LLP, is located at

      Suite 2300
      321 North Clark Street
      Chicago, Illinois 60654
      United States
The docket/reference number is 215021-00006.

The phone number is 312-464-3110.

The fax number is 312-464-31111.

The email address is Trademarks@loeb.com

SIGNATURE(S)
Response Signature
Signature: /Tatyana V. Gilles/     Date: 09/24/2019
Signatory's Name: Tatyana V. Gilles
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 3124643125

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:    DOUGLAS N. MASTERS
   LOEB & LOEB LLP
   
   321 N. CLARK STREET, SUITE 2300
   CHICAGO, Illinois 60654
Mailing Address:    Douglas N. Masters
   Loeb & Loeb LLP
   Suite 2300
   321 North Clark Street
   Chicago, Illinois 60654
        
Serial Number: 88266969
Internet Transmission Date: Tue Sep 24 13:25:29 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019092413252956
7109-88266969-6102eb49145ce559949362841b
98e4444b22d91ad8421221efb7e713edc6f605e8
3-N/A-N/A-20190924120929269142