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. 88305496 SIGMA (Stylized and/or with Design, see http://uspto.report/TM/88305496/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of argument has been attached.
Original PDF file:
evi_208185139113-20191017111850857903_._RESPONSE_TO_OFFICE_ACTION.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Cargo container rental services, cargo handling, correspondence delivery by post and/or messenger, courier services, delivery and storage of goods, distribution services, namely, delivery foods and beverages, freight and transport brokerage, freighting services, frozen-food locker rental, goods warehousing, packaging articles for transportation, packaging articles to the order and specification of others, packing articles for transportation, parcel delivery, pizza delivery, refrigerator rental, shipping of goods, supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck, transport and delivery of goods, warehousing services, namely, storage, distribution, pick up, packing, and shipping of foods and beverages
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.

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[ Mexico application number 2158501 filed 01/29/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cargo container rental services, cargo handling, correspondence delivery by post and/or messenger, courier services, delivery and storage of goods, distribution services, namely, delivery foods and beverages, freight and transport brokerage, freighting services, frozen-food locker rental, goods warehousing, packaging articles for transportation, packaging articles to the order and specification of others, packing articles for transportation, parcel delivery, pizza delivery, refrigerator rental, shipping of goods, supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck, transport and delivery of goods, warehousing services, namely, storage, distribution, pick up, packing, and shipping of foods and beverages; Cargo container rental services; cargo handling; correspondence delivery by post and messenger; courier services, delivery and storage of goods; distribution services, namely, delivery of foods and beverages; freight and transport brokerage; freighting services; frozen-food locker rental; goods warehousing; packaging articles for transportation; packaging articles to the order and specification of others; packing articles for transportation; parcel delivery; pizza delivery; refrigerator rental; shipping of goods; supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship and truck; transport and delivery of goods; warehousing services, namely, storage, distribution, pick up, packing, and shipping of foods and beveragesClass 039 for Cargo container rental services; cargo handling; correspondence delivery by post and messenger; courier services, delivery and storage of goods; distribution services, namely, delivery of foods and beverages; freight and transport brokerage; freighting services; frozen-food locker rental; goods warehousing; packaging articles for transportation; packaging articles to the order and specification of others; packing articles for transportation; parcel delivery; pizza delivery; refrigerator rental; shipping of goods; supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship and truck; transport and delivery of goods; warehousing services, namely, storage, distribution, pick up, packing, and shipping of foods and beverages
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 [ Mexico application number 2158501 filed 01/29/2019]. 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 class of goods/services in the application:
Current: Class 041 for Organizing exhibitions for cultural or educational purposes; Educational services, namely, arranging and conducting of colloquiums, conferences, congresses, in-person in the field of cooking and food preparation; educational services, namely, arranging and conducting of educational forums; arranging and conducting of workshops; online publication of recipes and cooking tutorials; publication of books of texts, other than publicity texts publication of electronic books and journals, writing of texts, providing online electronic publications, not downloadable; Personal coaching in the field of cooking and food preparation
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.

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[ Mexico application number 2158503 filed 01/29/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Organizing exhibitions for cultural or educational purposes; Educational services, namely, arranging and conducting of colloquiums, conferences, congresses, in-person in the field of cooking and food preparation; Educational services, namely, arranging and conducting of educational colloquiums, conferences, congresses, in-person in the field of cooking and food preparation; educational services, namely, arranging and conducting of educational forums; educational services, namely, arranging and conducting of educational forums in the field of cooking and food preparation; arranging and conducting of workshops; arranging and conducting of workshops in the field of cooking and food preparation; online publication of recipes and cooking tutorials; publication of books of texts, other than publicity texts publication of electronic books and journals, writing of texts, providing online electronic publications, not downloadable; publication of books of texts, other than publicity texts; publication of electronic books and journals; providing online electronic publications, not downloadable in the field of cooking and food preparation; Personal coaching in the field of cooking and food preparationClass 041 for Organizing exhibitions for cultural or educational purposes; Educational services, namely, arranging and conducting of educational colloquiums, conferences, congresses, in-person in the field of cooking and food preparation; educational services, namely, arranging and conducting of educational forums in the field of cooking and food preparation; arranging and conducting of workshops in the field of cooking and food preparation; online publication of recipes and cooking tutorials; publication of books of texts, other than publicity texts; publication of electronic books and journals; providing online electronic publications, not downloadable in the field of cooking and food preparation; Personal coaching in the field of cooking and food preparation
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 [ Mexico application number 2158503 filed 01/29/2019]. 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 AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SIGMA ALIMENTOS, S.A. DE C.V. a(n) sociedad anonima (sa de cv), having an address of
      
      Avenida Gómez Morin No. 1111Colonia Carrizalejo
      San Pedro Garza García, 66254
      Mexico

Proposed: SIGMA ALIMENTOS, S.A. DE C.V., sociedad anonima (sa de cv) legally organized under the laws of Mexico, having an address of
      Avenida Gómez Morin No. 1111
      Colonia Carrizalejo
      San Pedro Garza García, 66254
      Mexico

The applicant's current attorney information: H David Starr. H David Starr of MUNCY, GEISSLER, OLDS & LOWE, P.C., is located at

      4000 LEGATO ROAD, SUITE 310
      FAIRFAX, Virginia 22203
      US
The docket/reference number is 10004.70069.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is hds@mg-ip.com

The applicants proposed attorney information: H David Starr. Other appointed attorneys are Joe M. Muncy, Martin R. Geissler, Mark E. Olds, Scott L. Lowe, Roberta S. Bren, P. Jay Hines, Jeffrey H. Kaufman, Marcus Luepke, Kyoko Imai. H David Starr of Muncy, Geissler, Olds & Lowe, 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

      4000 Legato Road, Suite 310
      Fairfax, Virginia 22203
      United States
The docket/reference number is 10004.70069.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is hds@mg-ip.com

H David Starr 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: H DAVID STARR. H DAVID STARR of MUNCY, GEISSLER, OLDS & LOWE, P.C., is located at

      4000 LEGATO ROAD, SUITE 310
      FAIRFAX, Virginia 22203
      US
The docket/reference number is 10004.70069.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is hds@mg-ip.com; mailroom@mg-ip.com

The applicants proposed correspondence information: H David Starr. H David Starr of Muncy, Geissler, Olds & Lowe, P.C., is located at

      4000 Legato Road, Suite 310
      Fairfax, Virginia 22203
      United States
The docket/reference number is 10004.70069.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is hds@mg-ip.com; mailroom@mg-ip.com

SIGNATURE(S)
Response Signature
Signature: /H. David Starr/     Date: 10/17/2019
Signatory's Name: H. David Starr
Signatory's Position: Attorney for Applicant, District of Columbia 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:    H DAVID STARR
   MUNCY, GEISSLER, OLDS & LOWE, P.C.
   
   4000 LEGATO ROAD, SUITE 310
   FAIRFAX, Virginia 22203
Mailing Address:    H David Starr
   Muncy, Geissler, Olds & Lowe, P.C.
   4000 Legato Road, Suite 310
   Fairfax, Virginia 22203
        
Serial Number: 88305496
Internet Transmission Date: Thu Oct 17 11:36:33 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191017113633
994032-88305496-610bca5f4f481e63fc280abc
d1ab442bac312866fa579925082bbf094e23cb4-
N/A-N/A-20191017111850857903