| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88273691 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88273691/mark.png |
| LITERAL ELEMENT | ICSB |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
RESPONSE This Response (this “Response”) responds to the Office Action dated April 4, 2019, for the above-referenced mark. Please amend the description of goods and services as follows: “cryopreservation kits for use in the artificial insemination of dogs, consisting primarily of sperm collection container, sperm freezing medium, and artificial insemination kit consisting primarily of a syringe, connector, insemination rod, and lubricant, in International Class 10; franchise services, namely, licensing of canine semen banks, assistance with the establishment of canine semen banks, and training of proprietary semen collection and insemination techniques, in International Class 35; and canine sperm banks; in International Class 44” REMARKS: The Examining Attorney has refused registration of the applied-for mark (“the Applicant’s Mark” or “the Mark”) for the reasons discussed below. Applicant respectfully disagrees and requests reconsideration in view of the below comments. 1. Partial Specimen Refusal. The Examining Attorney has refused registration of the services in International Class 35 because the specimen allegedly does not show the Mark in use
in commerce in connection with any of the services specified in International Class 35 in the application. While the Applicant respectfully disagrees with the
Examining Attorney’s analysis, the Applicant submits herewith a substitute specimen of use showing the Mark in connection with the services specified in International Class 35 in the
application. The substitute specimen of use is a Franchise Licensing Agreement provided to the Applicant’s franchisees, which displays the Mark at the top of the
Agreement. The Applicant asserts that the substitute specimen of use was in use in commerce at least as early as the filing date of the application. In view of submission of a substitute specimen of use for International Class 35, the Applicant respectfully requests that the objection to the
specimen of use be withdrawn. 2. Recitation of Goods and Services. The Examining Attorney states that the goods presently classified in International Class 5 are more accurately classified in International Class 10,
and requests appropriate correction. Accordingly, the Applicant has amended the goods to be properly classified in International Class 10. The Examining Attorney has requested additional clarity regarding the Applicant’s franchise services classified in International Class 35. As noted above, the Applicant has amended the description of services in International Class 35 to read: franchise services, namely, licensing of canine semen banks, assistance with the establishment of canine semen banks, and training of proprietary semen collection and insemination techniques, in International Class 35. In view of the Applicant’s amendments to the description of goods and services, the Applicant respectfully requests that the objections be
withdrawn. 3. Conclusion. Based on the foregoing, the Applicant believes that the application is in condition for acceptance for publication, and such action is respectfully requested. |
|
| GOODS AND/OR SERVICES SECTION (005)(class deleted) | |
| GOODS AND/OR SERVICES SECTION (010)(class added)Original Class (005) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| cryopreservation kits for use in the artificial insemination of dogs, consisting primarily of a sperm collection container, sperm freezing medium, an artificial insemination kit consisting primarily of a syringe, connector, insemination rod, and lubricant | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/31/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/31/2003 |
| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | franchise services in the field of canine semen banks |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/31/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/31/2003 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| franchise services, namely, licensing of canine semen banks, assistance with the establishment of canine semen banks, and training of proprietary semen collection and insemination techniques | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/31/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/31/2003 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPU1-6619310082-20190820151043659971_._ICSB___Substitute_Specimen_Class_35.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\736\88273691\xml5\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\736\88273691\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\736\88273691\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\736\88273691\xml5\ROA0005.JPG | |
| SPECIMEN DESCRIPTION | a license agreement between the Applicant and perspective licensees |
| GOODS AND/OR SERVICES SECTION (044)(no change) | |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Frank X. Curci/ |
| SIGNATORY'S NAME | Fran X. Curci |
| SIGNATORY'S POSITION | Attorney of Record, Oregon Bar Member |
| DATE SIGNED | 08/20/2019 |
| RESPONSE SIGNATURE | /Frank X. Curci/ |
| SIGNATORY'S NAME | Frank X. Curci |
| SIGNATORY'S POSITION | Attorney of Record, Oregon Bar Member |
| SIGNATORY'S PHONE NUMBER | 503-226-1191 |
| DATE SIGNED | 08/20/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 20 15:17:44 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0190820151744214491-88273 691-610ffc4181d7f43d919f1 f728813520a3a4e6c782977a1 e24bf6d53eca1eafe8c33-N/A -N/A-20190820151043659971 |
| 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
This Response (this “Response”) responds to the Office Action dated April 4, 2019, for the above-referenced mark.
Please amend the description of goods and services as follows:
“cryopreservation kits for use in the artificial insemination of dogs, consisting primarily of sperm collection container, sperm freezing medium, and artificial insemination kit consisting primarily of a syringe, connector, insemination rod, and lubricant, in International Class 10;
franchise services, namely, licensing of canine semen banks, assistance with the establishment of canine semen banks, and training of proprietary semen collection and insemination techniques, in International Class 35; and
canine sperm banks; in International Class 44”
REMARKS:
The Examining Attorney has refused registration of the applied-for mark (“the Applicant’s Mark” or “the Mark”) for the reasons discussed below. Applicant respectfully disagrees and requests reconsideration in view of the below comments.
1. Partial Specimen Refusal.
The Examining Attorney has refused registration of the services in International Class 35 because the specimen allegedly does not show the Mark in use
in commerce in connection with any of the services specified in International Class 35 in the application. While the Applicant respectfully disagrees with the
Examining Attorney’s analysis, the Applicant submits herewith a substitute specimen of use showing the Mark in connection with the services specified in International Class 35 in the
application. The substitute specimen of use is a Franchise Licensing Agreement provided to the Applicant’s franchisees, which displays the Mark at the top of the
Agreement. The Applicant asserts that the substitute specimen of use was in use in commerce at least as early as the filing date of the application.
In view of submission of a substitute specimen of use for International Class 35, the Applicant respectfully requests that the objection to the
specimen of use be withdrawn.
2. Recitation of Goods and Services.
The Examining Attorney states that the goods presently classified in International Class 5 are more accurately classified in International Class 10,
and requests appropriate correction. Accordingly, the Applicant has amended the goods to be properly classified in International Class 10.
The Examining Attorney has requested additional clarity regarding the Applicant’s franchise services classified in International Class 35. As noted above, the Applicant has amended the description of services in International Class 35 to read:
franchise services, namely, licensing of canine semen banks, assistance with the establishment of canine semen banks, and training of proprietary semen collection and insemination techniques, in International Class 35.
In view of the Applicant’s amendments to the description of goods and services, the Applicant respectfully requests that the objections be
withdrawn.
3. Conclusion.
Based on the foregoing, the Applicant believes that the application is in condition for acceptance for publication, and such action is respectfully requested.
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.
