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. 88296538 ZEUS(Standard Characters, see http://uspto.report/TM/88296538/mark.png) has been amended as follows:

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

With this response applicant deletes the goods in classes 9 and 10. Applicant respectfully requests withdrawal of the refusal under section 2(d) and requests that its application be passed to publication.


CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Electronic cigarette cases; rechargeable electric battery; battery chargers; spare parts and accessories for vaporizers, namely, mouth pieces, filters, slip rings, tubes, spacers, cleaning utensils for vaporizers

Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Vaporizers for medical purposes; Medical and veterinary apparatus and instruments

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Vaporizers for smoking purposes; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Electronic cigarette atomizers
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 12/00/2013 and first used in commerce at least as early as 03/26/2014 , 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[ European Union Trademark - EUTM application number 017944355 filed 08/14/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Vaporizers for smoking purposes; oral vaporizers for smoking purposes; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; oral personal vaporizers for smokers and electronic cigarettes; Electronic cigarette atomizers; Electronic cigarette atomizers sold empty; spare parts and accessories for oral vaporizers for smokers, namely, mouth pieces, filters for oral vaporizers for smokers, slip rings being connectors for oral vaporizers for smokers, filter tubes, spacers being attachments for oral vaporizers for smokers, cleaning utensils for vaporizers, namely, tobacco pipe cleaners for electronic smoking devices and cleaning brushes for electronic smoking devices; electronic cigarette cases.Class 034 for oral vaporizers for smoking purposes; oral personal vaporizers for smokers and electronic cigarettes; Electronic cigarette atomizers sold empty; spare parts and accessories for oral vaporizers for smokers, namely, mouth pieces, filters for oral vaporizers for smokers, slip rings being connectors for oral vaporizers for smokers, filter tubes, spacers being attachments for oral vaporizers for smokers, cleaning utensils for vaporizers, namely, tobacco pipe cleaners for electronic smoking devices and cleaning brushes for electronic smoking devices; electronic cigarette cases.
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 12/00/2013 and first used in commerce at least as early as 03/26/2014 , 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 [ European Union Trademark - EUTM application number 017944355 filed 08/14/2018]. 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.

SIGNATURE(S)
Response Signature
Signature: /op/     Date: 05/16/2019
Signatory's Name: Oliver Platz
Signatory's Position: Attorney of Record, NY bar member

Signatory's Phone Number: 951 667 5289

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88296538
Internet Transmission Date: Thu May 16 14:19:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190516141940926
837-88296538-62036bfb098f6f331f1bbc9059b
afce9b6887166882dd3fdfb1e7154123622561-N
/A-N/A-20190516111258293151