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. 88274804 TALK CLEAN TO ME BLOG(Standard Characters, see http://uspto.report/TM/88274804/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Providing information and news relating to cleaning and disinfecting of hospitals, dental offices, veterinary clinics and other healthcare institutions, cruise ships, farms for livestock, beauty salons and spas, and tattoo studios for infection control and prevention
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/31/2011 and first used in commerce at least as early as 05/31/2011 , and is now in use in such commerce.

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[ Canada application number 1911167 filed 07/24/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing information and news relating to cleaning and disinfecting of hospitals, dental offices, veterinary clinics and other healthcare institutions, cruise ships, farms for livestock, beauty salons and spas, and tattoo studios for infection control and prevention; Providing information and news in the field of cleaning and disinfecting of hospitals, dental offices, veterinary clinics and other healthcare institutions, cruise ships, farms for livestock, beauty salons and spas, and tattoo studios for infection control and prevention purposesClass 037 for Providing information and news in the field of cleaning and disinfecting of hospitals, dental offices, veterinary clinics and other healthcare institutions, cruise ships, farms for livestock, beauty salons and spas, and tattoo studios for infection control and prevention purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/31/2011 and first used in commerce at least as early as 05/31/2011 , and is now in use in such commerce.
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 1911167 filed 07/24/2018]. 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: Coleen Morrison. Coleen Morrison of PERRY + CURRIER INC., is located at

      1300 YONGE STREET, SUITE 500
      TORONTO, ON, M4T1X3
      CA
The docket/reference number is TM2898US01.

The phone number is +1-4169208170 x148.

The email address is Morrison@pckip.com

The applicants proposed attorney information: Coleen Morrison. Other appointed attorneys are Coleen Morrison. Coleen Morrison of PERRY + CURRIER INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1300 YONGE STREET, SUITE 500
      TORONTO, ON, M4T1X3
      Canada
The docket/reference number is TM2898US01.

The phone number is +1-4169208170 x148.

The email address is Morrison@pckip.com

Coleen Morrison 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: COLEEN MORRISON. COLEEN MORRISON of PERRY + CURRIER INC., is located at

      1300 YONGE STREET, SUITE 500
      TORONTO, ON, M4T1X3
      CA
The docket/reference number is TM2898US01.

The phone number is +1-4169208170 x148.

The email address is Morrison@pckip.com; Tomas@pckip.com; docketing@pckip.com

The applicants proposed correspondence information: Coleen Morrison. Coleen Morrison of PERRY + CURRIER INC., is located at

      1300 YONGE STREET, SUITE 500
      TORONTO, ON, M4T1X3
      Canada
The docket/reference number is TM2898US01.

The phone number is +1-4169208170 x148.

The email address is Morrison@pckip.com; henrie@pckip.com; feeney@pckip.com; docketing@pckip.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "BLOG" apart from the mark as shown.


Miscellaneous Statement
The Canadian Trademark has not yet been registered; it is still under prosecution. Therefore we cannot provide a Foreign Registration Certificate at the moment.


SIGNATURE(S)
Response Signature
Signature: /Alan Feeney/     Date: 10/09/2019
Signatory's Name: Alan Feeney
Signatory's Position: Attorney of record

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:    COLEEN MORRISON
   PERRY + CURRIER INC.
   
   1300 YONGE STREET, SUITE 500
   TORONTO, ON, M4T1X3
Mailing Address:    Coleen Morrison
   PERRY + CURRIER INC.
   1300 YONGE STREET, SUITE 500
   TORONTO, ON, M4T1X3
        
Serial Number: 88274804
Internet Transmission Date: Wed Oct 09 14:20:38 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019100914203815
9259-88274804-61021504d3c2445876fa6ef9ba
764df9114c694d56fc8eeb6448bfadf24fbb0611
-N/A-N/A-20191009141451562503