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. 88291410 PHYTOCAB(Standard Characters, see http://uspto.report/TM/88291410/mark.png) has been amended as follows:

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

This paper is responsive to the Office Action emailed September 13, 2019. Applicant thanks Examining Attorney Lindsey H. Ben for the courtesy of a telephone interview on March 12, 2020 with the undersigned attorney in which she explained some aspects of the outstanding refusals to register.

By this Response, Applicant is requesting amendment of the Identification of Goods by substituting the following for the original Identification of Goods as stated in the application:

A blend of lyophilized herbs namely, oregano, basil, thyme, and nettle sold as a part of dietary and nutritional supplements which have a delta-9 THC concentration of not more than 0.3% on a dry weight basis in Class 5.

It is respectfully submitted that the foregoing amendment to the recitation of goods resolves both outstanding refusals to register. First, the amended recitation makes it clear that the supplements into which the blend of lyophilized herbs (oregano, basil, thyme, and nettle) will be incorporated have a delta-9 THC concentration of not more than 0.3% on a dry weight basis. Second, although the supplements into which the blend of lyophilized herbs (oregano, basil, thyme, and nettle) will be sold contains <0.3% hemp-derived CBD, the amendment clarifies that the applied for mark identifies the blend of lyophilized herbs (which contain no CBD) and not the overall supplement in its entirety.

It is respectfully submitted that the foregoing resolves the outstanding refusals to register and requests that those refusals be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Dietary supplement containing vitamins and spices and/or herbs
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: Dietary supplement containing vitamins and spices and/or herbs; A blend of lyophilized herbs namely, oregano, basil, thyme, and nettle sold as a part of dietary and nutritional supplements which have a delta-9 THC concentration of not more than 0.3% on a dry weight basisClass 005 for A blend of lyophilized herbs namely, oregano, basil, thyme, and nettle sold as a part of dietary and nutritional supplements which have a delta-9 THC concentration of not more than 0.3% on a dry weight 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ISI Brands Inc., a corporation of Michigan, having an address of
      3133 Orchard Vista Drive
      Grand Rapids, Michigan 49546
      United States

Proposed: ISI Brands Inc., a corporation of Michigan, having an address of
      3133 Orchard Vista Drive
      Grand Rapids, Michigan 49546
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Timothy E. Eagle. Timothy E. Eagle of VARNUM, RIDDERING, SCHMIDT & HOWLETT LLP, is located at

      333 BRIDGE STREET, P.O. BOX 352
      GRAND RAPIDS, Michigan 49501
      United States
The docket/reference number is Twinlab T819.
      The phone number is 616-336-6000.
      The fax number is 616-336-7000.
      The email address is trademarks@varnumlaw.com

The owner's/holder's proposed attorney information: Timothy E. Eagle. Timothy E. Eagle of VARNUM, RIDDERING, SCHMIDT & HOWLETT LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      333 BRIDGE STREET, P.O. BOX 352
      GRAND RAPIDS, Michigan 49501
      United States
The docket/reference number is Twinlab T819.
      The phone number is 616-336-6000.
      The fax number is 616-336-7000.
      The email address is trademarks@varnumlaw.com

Timothy E. Eagle 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.Correspondence Information (current):
      TIMOTHY E. EAGLE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@varnumlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Twinlab T819.
Correspondence Information (proposed):
      Timothy E. Eagle
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@varnumlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): teeagle@varnumlaw.com

The docket/reference number is Twinlab T819.

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: /Timothy E. Eagle/     Date: 03/13/2020
Signatory's Name: Timothy E. Eagle
Signatory's Position: attorney of record, admitted in Michigan

Signatory's Phone Number: 616.336.6000

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 E. EAGLE
   VARNUM, RIDDERING, SCHMIDT & HOWLETT LLP
   
   333 BRIDGE STREET, P.O. BOX 352
   GRAND RAPIDS, Michigan 49501
Mailing Address:    Timothy E. Eagle
   VARNUM, RIDDERING, SCHMIDT & HOWLETT LLP
   333 BRIDGE STREET, P.O. BOX 352
   GRAND RAPIDS, Michigan 49501
        
Serial Number: 88291410
Internet Transmission Date: Fri Mar 13 09:38:30 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020031309383063
1577-88291410-710f09a59bb572b36f24f66552
7a5ac42e5d1694c125328ace234333b46767a-N/
A-N/A-20200313093345411763