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. 88314323 MOJO (Stylized and/or with Design, see http://uspto.report/TM/88314323/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 arguments and Exhibits A to E, labelled as such in the document titles has been attached.
Original PDF file:
evi_7514553117-20191107194642865287_._Arguments_-_2_d__refusal_of_MOJO__design_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_7514553117-20191107194642865287_._ibit_A_-_Registrations_and_Application_for_DIGITMOJO_Section.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Original PDF file:
evi_7514553117-20191107194642865287_._Exhibit_B_-_Definition_of_Digit_at_Dictionarycom.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_7514553117-20191107194642865287_._Exhibit_C_-_McCarthy_Section_23.57.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_7514553117-20191107194642865287_._hibit_D_-_Registrations_and_Application_for_MT._MOJO_Section.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_7514553117-20191107194642865287_._Exhibit_E_-_Mt._Mojo_Google_Maps.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Vibromassage apparatus; massage apparatus; vibrators; sex toys
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[ Hong Kong application number 304835890 filed 02/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Vibromassage apparatus; massage apparatus; vibrators; adult sexual stimulation aids, namely, vibrators; sex toysClass 010 for Vibromassage apparatus; massage apparatus; adult sexual stimulation aids, namely, vibrators; sex toys
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 [ Hong Kong application number 304835890 filed 02/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 304835890 registered 09/16/2019 with a renewal date of __________ and an expiration date of 02/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-7514553117-194642865_._MOJO__design___Hong_Kong_reg._no._304835890_-_certificate.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The applicant's current attorney information: Kristina Montanaro Schrader. Kristina Montanaro Schrader of ADAMS AND REESE LLP, is located at

      SUITE 2700
      424 CHURCH STREET
      NASHVILLE, Tennessee 37219
      US
The docket/reference number is 018675-1.

The phone number is 615-259-1450.

The fax number is 6152591470.

The email address is trademarks@arlaw.com

The applicants proposed attorney information: Kristina Montanaro Schrader. Other appointed attorneys are Edward Playfair (whose bar membership details are provided with this filing), Haverly MacArthur, Christopher Burkett. Kristina Montanaro Schrader of ADAMS AND REESE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 2700
      424 CHURCH STREET
      NASHVILLE, Tennessee 37219
      United States
The docket/reference number is 018675-1.

The phone number is 615-259-1450.

The fax number is 6152591470.

The email address is trademarks@arlaw.com

Kristina Montanaro Schrader 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: KRISTINA MONTANARO SCHRADER. KRISTINA MONTANARO SCHRADER of ADAMS AND REESE LLP, is located at

      SUITE 2700
      424 CHURCH STREET
      NASHVILLE, Tennessee 37219
      US
The docket/reference number is 018675-1.

The phone number is 615-259-1450.

The fax number is 6152591470.

The email address is trademarks@arlaw.com

The applicants proposed correspondence information: Kristina Montanaro Schrader. Kristina Montanaro Schrader of ADAMS AND REESE LLP, is located at

      SUITE 2700
      424 CHURCH STREET
      NASHVILLE, Tennessee 37219
      United States
The docket/reference number is 018675-1.

The phone number is 615-259-1450.

The fax number is 6152591470.

The email address is trademarks@arlaw.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the word "MOJO" in stylized font within a shaded rectangle.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Edward Playfair/     Date: 11/07/2019
Signatory's Name: Edward Playfair
Signatory's Position: Attorney of record, Tennessee bar member

Signatory's Phone Number: (615) 259-1450

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:    KRISTINA MONTANARO SCHRADER
   ADAMS AND REESE LLP
   SUITE 2700
   424 CHURCH STREET
   NASHVILLE, Tennessee 37219
Mailing Address:    Kristina Montanaro Schrader
   ADAMS AND REESE LLP
   SUITE 2700
   424 CHURCH STREET
   NASHVILLE, Tennessee 37219
        
Serial Number: 88314323
Internet Transmission Date: Thu Nov 07 20:00:45 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019110720004550
8408-88314323-7002929df6d538e5b3040a8f87
e21af4de95ffe14ca5f26a1d2bb4145afd33dda6
-N/A-N/A-20191107194642865287