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. 88298626 DR. ZODIAK'S MOONROCK(Standard Characters, see http://uspto.report/TM/88298626/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 nos. 87762313, 88172522, and 87848866, and these Section 2(d) citations should also be withdrawn.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 hereby deletes the following class of goods/services from the application.
Class 034 for Lighters for smokers; Electronic cigarette refill cartridges sold empty; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarettes; Cigarette cases; tobacco grinders; Electronic smokeless oral vaporizers; smokeless oral vaporizers for oils and waxes; electronic oral vaporizers for waxes and herbs; smokeless cigarette vaporizer pipe; Smokeless cigarette vaporizer pipe; vaporizer pens

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; Providing an Internet website portal featuring information, news, and commentary in the field of current events 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 softwareClass 041 for Providing an Internet website portal featuring information, news, and commentary in the field of current events 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), 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 Alex Patel. 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

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MOONROCK 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-10418911190-172608946_._Mens_Rea_Consent_Form_signed.pdf
Converted PDF file(s) ( 1 page)
Consent File1

Miscellaneous Statement
Applicant has deleted class 34, obviating the CSA refusal.


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: 88298626
Internet Transmission Date: Thu Oct 17 17:29:51 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201910171729519
67884-88298626-610ef6ee6329e16982a416647
f8cb1c491cb767e47632054427778b65bad13d7e
2-N/A-N/A-20191017172608946173