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. 88289504 INVICTUS(Standard Characters, see http://uspto.report/TM/88289504/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable electronic books, forms and expert systems in the field of marijuana, medical marijuana and recreational marijuana including cannabis science, cannabis cultivation and cannabis culture
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.

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 1942065 filed 01/22/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Downloadable electronic books, forms and expert systems in the field of marijuana, medical marijuana and recreational marijuana including cannabis science, cannabis cultivation and cannabis culture; Downloadable electronic books and forms in the nature of brochures, product white papers and product data sheetsand expert systems in the field of marijuana, medical marijuana and recreational marijuana including cannabis science, cannabis cultivation and cannabis culture, namely downloadable applications for mobile devices and computer software.Class 009 for Downloadable electronic books and forms in the nature of brochures, product white papers and product data sheetsand expert systems in the field of marijuana, medical marijuana and recreational marijuana including cannabis science, cannabis cultivation and cannabis culture, namely downloadable applications for mobile devices and computer software.
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.

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 1942065 filed 01/22/2019]. 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 proposes to amend the following:

Current:
Class 041 for Educational services, namely, in the fields of cannabis and marijuana, namely, providing information, news, and commentary in the field of current events relating to cannabis and marijuana, providing a website featuring non-downloadable articles in the field of health, wellness, nutrition, cannabis and the cannabis industry, providing on-line digital publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis via the Internet, providing a website featuring blogs and non-downloadable publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis, arranging and conducting business seminars in the field of cannabis cultivation, infused products and extractions, and sales, and providing on-line non-downloadable series of audio programs and audio recordings regarding the culture of the cannabis industry via the Internet
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.

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 1942065 filed 01/22/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Educational services, namely, in the fields of cannabis and marijuana, namely, providing information, news, and commentary in the field of current events relating to cannabis and marijuana, providing a website featuring non-downloadable articles in the field of health, wellness, nutrition, cannabis and the cannabis industry, providing on-line digital publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis via the Internet, providing a website featuring blogs and non-downloadable publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis, arranging and conducting business seminars in the field of cannabis cultivation, infused products and extractions, and sales, and providing on-line non-downloadable series of audio programs and audio recordings regarding the culture of the cannabis industry via the Internet; Educational services in the fields of cannabis and marijuana, namely, providing information, news, and commentary in the field of current events relating to cannabis and marijuana, providing a website featuring non-downloadable articles in the field of health, wellness, nutrition, cannabis and the cannabis industry, providing on-line digital publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis via the Internet, providing a website featuring blogs and non-downloadable publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis, arranging and conducting business seminars in the field of cannabis cultivation, infused products and extractions, and sales, and providing on-line non-downloadable series of audio programs and audio recordings regarding the culture of the cannabis industry via the InternetClass 041 for Educational services in the fields of cannabis and marijuana, namely, providing information, news, and commentary in the field of current events relating to cannabis and marijuana, providing a website featuring non-downloadable articles in the field of health, wellness, nutrition, cannabis and the cannabis industry, providing on-line digital publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis via the Internet, providing a website featuring blogs and non-downloadable publications in the nature of blogs, articles, newsletters, and editorials in the field of cannabis, arranging and conducting business seminars in the field of cannabis cultivation, infused products and extractions, and sales, and providing on-line non-downloadable series of audio programs and audio recordings regarding the culture of the cannabis industry via the Internet
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.

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 1942065 filed 01/22/2019]. 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: INVICTUS MD STRATEGIES CORP., a corporation of Canada, having an address of
      300-15047 Marine Dr.
      White Rock, BC, V4B1C5
      Canada
      +1-6046777727
Proposed: INVICTUS MD STRATEGIES CORP., a corporation of Canada, having an address of
      300-15047 Marine Dr.
      White Rock, BC, V4B1C5
      Canada
      Email Address: XXXX
      +1-6046777727

ADDITIONAL STATEMENTS
Miscellaneous Statement
The foreign registration has not yet issued, as such Applicant requests that this application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).

Correspondence Information (current):
      Brent Capehart
      PRIMARY EMAIL FOR CORRESPONDENCE: info@palmerip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0754-00-T04.
Correspondence Information (proposed):
      Brent Capehart
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@palmerip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0754-00-T04.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /BrentCapehart/     Date: 03/11/2020
Signatory's Name: Brent Capehart
Signatory's Position: Attorney of record, Arkansas Bar member

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:    Brent Capehart
   PALMER IP INC.
   
   704 - 1478 WEST HASTINGS STREET
   VANCOUVER, BC, V6G3J6
Mailing Address:    Brent Capehart
   PALMER IP INC.
   704 - 1478 WEST HASTINGS STREET
   VANCOUVER, BC, V6G3J6
        
Serial Number: 88289504
Internet Transmission Date: Wed Mar 11 20:00:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200311200042809
968-88289504-710ab0b1b0d04ef9d7ad1c8d2c2
fec6bb4aacaf384fdd50b31b247378ecdbf1df-N
/A-N/A-20200311195343054340