Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88298607 |
LAW OFFICE ASSIGNED |
LAW OFFICE 123 |
MARK SECTION |
MARK |
http://uspto.report/TM/88298607/mark.png |
LITERAL ELEMENT |
DR. ZODIAK'S MOONROCK CLEAR |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Applicant has amended its goods in class 9 to clarify they are batteries and chargers specifically for electronic cigarettes. The goods of the
cited registration (MOONROCK, Reg. No. 5854177) are batteries and chargers specifically for cell phones. The goods are entirely unrelated and there is no likelihood of confusion. Further, Applicant's
mark and goods/services are completely dissimilar to those of the cited prior-pending application ser. nos. 87762313, 88172522, and 87848866, and these Section 2(d) citations should also be
withdrawn. If the Examining Attorney elects not to withdraw the Section 2(d) citations, Applicant respectfully requests suspension pending the outcome of the prior-pending applications. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
batteries; Electronic cigarette batteries; Chargers for electronic cigarettes; Battery chargers; Downloadable music files; Visual
recordings and audiovisual recordings featuring music; audio recordings featuring music; Downloadable electronic game software |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
batteries; Electronic cigarette batteries; Chargers
for electronic cigarettes; Downloadable music files; Battery chargers; Visual recordings and audiovisual
recordings featuring music; audio recordings featuring music; Downloadable electronic game software |
FINAL DESCRIPTION |
Electronic cigarette batteries; Chargers for electronic cigarettes; Downloadable music files; Visual recordings and audiovisual
recordings featuring music; audio recordings featuring music; Downloadable electronic game software |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (025)(no change) |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical
marijuana, hemp, and industrial hemp; on-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis, medical marijuana, hemp, and industrial hemp;
Providing an Internet website portal featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hemp; Entertainment
services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances;
Providing online non-downloadable game software |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Providing an Internet website portal featuring current events information, news and commentary in the
fields of cannabis, medical marijuana, hemp, and industrial hemp; On-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis,
medical marijuana, hemp, and industrial hemp; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical
sound recordings; Providing an Internet website portal featuring news and commentary in the field of current events reporting on the subjects of marijuana,
medical marijuana, hemp and industrial hemp; Entertainment services in the nature of live musical performances; Providing online non-downloadable
game software |
FINAL DESCRIPTION |
On-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis, medical marijuana, hemp,
and industrial hemp; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature
of live musical performances; Providing online non-downloadable game software |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (044)(current) |
INTERNATIONAL CLASS |
044 |
DESCRIPTION |
Providing a website featuring health information regarding medical cannabis strains, therapeutic uses, indications, and effects of
medical cannabis; Online medical cannabis resources, namely, providing online resources featuring medical information pertaining to medicinal cannabis; Providing online information, news, and
commentary in the field of health, wellness, health benefits of medical cannabis, and nutrition; Providing a website featuring information in the field of health, wellness, health benefits of medical
cannabis, and nutrition |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (044)(proposed) |
INTERNATIONAL CLASS |
044 |
TRACKED TEXT DESCRIPTION |
Providing a website featuring health information regarding medical cannabis strains, therapeutic uses, indications,
and effects of medical cannabis; Online medical cannabis resources, namely, providing online resources featuring medical information pertaining to medicinal
cannabis; Providing online information, news, and commentary in the field of health, wellness, health benefits of medical cannabis, and nutrition; Providing a website featuring information in the field of health, wellness, health benefits of medical cannabis, and nutrition; Providing an Internet
website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp; Providing an
Internet website portal featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hemp |
FINAL DESCRIPTION |
Providing a website featuring health information regarding medical cannabis strains, therapeutic uses, indications, and effects of
medical cannabis; Online medical cannabis resources, namely, providing online resources featuring medical information pertaining to medicinal cannabis; Providing online information, news, and
commentary in the field of health, wellness, health benefits of medical cannabis, and nutrition; Providing a website featuring information in the field of health, wellness, health benefits of medical
cannabis, and nutrition; Providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp;
Providing an Internet website portal featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hemp |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
DISCLAIMER |
No claim is made to the exclusive right to use MOONROCK CLEAR apart from the mark as shown. |
NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) |
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Daniel Laughlin, whose consent(s) to register is made of
record. |
CONSENT FILE NAME(S) |
ORIGINAL PDF FILE |
consent-10418911190-164630002_._Mens_Rea_Consent_Form_signed.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\882\986\88298607\xml6\ROA0002.JPG |
ATTORNEY SECTION (current) |
NAME |
Alex Patel |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
PATEL & ALMEIDA, P.C. |
STREET |
16830 VENTURA BLVD., SUITE 360 |
CITY |
ENCINO |
STATE |
California |
POSTAL CODE |
91436 |
COUNTRY |
US |
PHONE |
818-380-1900 |
EMAIL |
gregory@paiplaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
ATTORNEY SECTION (proposed) |
NAME |
Alex Patel |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Patel & Almeida, P.C. |
STREET |
16830 Ventura Blvd., Suite 360 |
CITY |
Encino |
STATE |
California |
POSTAL CODE |
91436 |
COUNTRY |
United States |
PHONE |
818-380-1900 |
EMAIL |
paulo@paiplaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
OTHER APPOINTED ATTORNEY |
Paulo A. de Almeida |
CORRESPONDENCE SECTION (current) |
NAME |
ALEX PATEL |
FIRM NAME |
PATEL & ALMEIDA, P.C. |
STREET |
16830 VENTURA BLVD., SUITE 360 |
CITY |
ENCINO |
STATE |
California |
POSTAL CODE |
91436 |
COUNTRY |
US |
PHONE |
818-380-1900 |
EMAIL |
gregory@paiplaw.com; Alex@paiplaw.com; Nikki@paiplaw.com; inbox@paiplaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
CORRESPONDENCE SECTION (proposed) |
NAME |
Alex Patel |
FIRM NAME |
Patel & Almeida, P.C. |
STREET |
16830 Ventura Blvd., Suite 360 |
CITY |
Encino |
STATE |
California |
POSTAL CODE |
91436 |
COUNTRY |
United States |
PHONE |
818-380-1900 |
EMAIL |
paulo@paiplaw.com; alex@paiplaw.com; nikki@paiplaw.com; inbox@paiplaw.com; Chris@paiplaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Paulo A. de Almeida/ |
SIGNATORY'S NAME |
Paulo A. de Almeida |
SIGNATORY'S POSITION |
Attorney |
SIGNATORY'S PHONE NUMBER |
8183801900 |
DATE SIGNED |
10/17/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Oct 17 17:00:51 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XX.XXX-
20191017170051821309-8829
8607-6104fab4c5fa46efcd3a
cc4611f851c7b1316b29cd547
a6a6b0c776b2c11878ce-N/A-
N/A-20191017164630002445 |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88298607 DR. ZODIAK'S MOONROCK CLEAR(Standard Characters, see http://uspto.report/TM/88298607/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Applicant has amended its goods in class 9 to clarify they are batteries and chargers specifically for electronic cigarettes. The goods of the cited registration (MOONROCK, Reg. No. 5854177) are
batteries and chargers specifically for cell phones. The goods are entirely unrelated and there is no likelihood of confusion. Further, Applicant's mark and goods/services are completely dissimilar
to those of the cited prior-pending application ser. nos. 87762313, 88172522, and 87848866, and these Section 2(d) citations should also be withdrawn. If the Examining Attorney elects not to withdraw
the Section 2(d) citations, Applicant respectfully requests suspension pending the outcome of the prior-pending applications.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for batteries; Electronic cigarette batteries; Chargers for electronic cigarettes; Battery chargers; Downloadable music files; Visual recordings and audiovisual recordings
featuring music; audio recordings featuring music; Downloadable electronic game software
Original Filing 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.
Proposed:
Tracked Text Description: batteries;
Electronic cigarette batteries;
Chargers for electronic cigarettes;
Downloadable music files;
Battery chargers;
Visual recordings and audiovisual recordings featuring music;
audio recordings featuring music;
Downloadable electronic game softwareClass 009 for Electronic cigarette batteries; Chargers for electronic
cigarettes; Downloadable music files; Visual recordings and audiovisual recordings featuring music; audio recordings featuring music; Downloadable electronic game 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.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp;
on-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis, medical marijuana, hemp, and industrial hemp; Providing an Internet website portal
featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hemp; Entertainment services by a musical artist and
producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances; Providing online non-downloadable game
software
Original Filing 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.
Proposed:
Tracked Text Description: Providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical
marijuana, hemp, and industrial hemp;
On-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis, medical marijuana, hemp, and
industrial hemp;
Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings;
Providing an Internet website portal featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and
industrial hemp;
Entertainment services in the nature of live musical performances;
Providing online non-downloadable game softwareClass
041 for On-line journals, namely, blogs featuring information about news and entertainment in the field of cannabis, medical marijuana, hemp, and industrial hemp; Entertainment services by a musical
artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances; Providing online
non-downloadable game 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.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing a website featuring health information regarding medical cannabis strains, therapeutic uses, indications, and effects of medical cannabis; Online medical
cannabis resources, namely, providing online resources featuring medical information pertaining to medicinal cannabis; Providing online information, news, and commentary in the field of health,
wellness, health benefits of medical cannabis, and nutrition; Providing a website featuring information in the field of health, wellness, health benefits of medical cannabis, and nutrition
Original Filing 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.
Proposed:
Tracked Text Description: Providing a website featuring health information regarding medical cannabis strains, therapeutic uses, indications, and effects of medical
cannabis;
Online medical cannabis resources, namely, providing online resources featuring medical information pertaining to medicinal cannabis;
Providing online information, news, and commentary in the field of health, wellness, health benefits of medical cannabis, and nutrition;
Providing a website
featuring information in the field of health, wellness, health benefits of medical cannabis, and nutrition;
Providing an Internet website portal featuring
current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp;
Providing an Internet website portal
featuring news and commentary in the field of current events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hempClass 044 for Providing a website featuring
health information regarding medical cannabis strains, therapeutic uses, indications, and effects of medical cannabis; Online medical cannabis resources, namely, providing online resources featuring
medical information pertaining to medicinal cannabis; Providing online information, news, and commentary in the field of health, wellness, health benefits of medical cannabis, and nutrition;
Providing a website featuring information in the field of health, wellness, health benefits of medical cannabis, and nutrition; Providing an Internet website portal featuring current events
information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp; Providing an Internet website portal featuring news and commentary in the field of current
events reporting on the subjects of marijuana, medical marijuana, hemp and industrial hemp
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.
The applicant's current attorney information: Alex Patel. Alex Patel of PATEL & ALMEIDA, P.C., is located at
16830 VENTURA BLVD., SUITE 360
ENCINO, California 91436
US
The phone number is 818-380-1900.
The email address is gregory@paiplaw.com
The applicants proposed attorney information: Alex Patel. Other appointed attorneys are Paulo A. de Almeida. Alex Patel of Patel & Almeida, P.C., is a member of the XX bar, admitted to the
bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
16830 Ventura Blvd., Suite 360
Encino, California 91436
United States
The phone number is 818-380-1900.
The email address is paulo@paiplaw.com
Alex Patel 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: ALEX PATEL. ALEX PATEL of PATEL & ALMEIDA, P.C., is located at
16830 VENTURA BLVD., SUITE 360
ENCINO, California 91436
US
The phone number is 818-380-1900.
The email address is gregory@paiplaw.com; Alex@paiplaw.com; Nikki@paiplaw.com; inbox@paiplaw.com
The applicants proposed correspondence information: Alex Patel. Alex Patel of Patel & Almeida, P.C., is located at
16830 Ventura Blvd., Suite 360
Encino, California 91436
United States
The phone number is 818-380-1900.
The email address is paulo@paiplaw.com; alex@paiplaw.com; nikki@paiplaw.com; inbox@paiplaw.com; Chris@paiplaw.com
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MOONROCK CLEAR apart from the mark as shown.
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Daniel Laughlin, whose consent(s) to register is made of record.
Original PDF file:
consent-10418911190-164630002_._Mens_Rea_Consent_Form_signed.pdf
Converted PDF file(s) ( 1 page)
Consent File1
SIGNATURE(S)
Response Signature
Signature: /Paulo A. de Almeida/ Date: 10/17/2019
Signatory's Name: Paulo A. de Almeida
Signatory's Position: Attorney
Signatory's Phone Number: 8183801900
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: ALEX PATEL
PATEL & ALMEIDA, P.C.
16830 VENTURA BLVD., SUITE 360
ENCINO, California 91436
Mailing Address: Alex Patel
Patel & Almeida, P.C.
16830 Ventura Blvd., Suite 360
Encino, California 91436
Serial Number: 88298607
Internet Transmission Date: Thu Oct 17 17:00:51 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201910171700518
21309-88298607-6104fab4c5fa46efcd3acc461
1f851c7b1316b29cd547a6a6b0c776b2c11878ce
-N/A-N/A-20191017164630002445