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. 88328406 TKO(Standard Characters, see http://uspto.report/TM/88328406/mark.png) has been amended as follows:

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

Attached as a PDF document in the Evidence Section

EVIDENCE

Original PDF file:
evi_12110249226-202007281 70206395665_._2020-07-28_ TKO_Amendment_for_Filing.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 005 for Liquid herbal tinctures for personal use; Cbd isolates sold in crystal powder form; cbd hemp oil, essential oils, none of the foregoing containing cannabis, thc, or cbd except as specifically allowed under federal law

Applicant hereby deletes the following class of goods/services from the application.
Class 030 for Confectionary made of sugar, namely, lollipops, candies, and chocolates; syrup flavorings to be added to food or beverages; honey sticks to be added to food or beverages; gummy candies; none of the foregoing containing cannabis, thc, or cbd except as specifically allowed under federal law

Applicant proposes to amend the following:

Current:
Class 034 for Smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp containing trace amounts of cbd derived solely from the mature stalks and sterilized seeds of the industrial hemp plant; hemp herbs for smoking; pre-rolled smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp flowers; all of which are derived solely from the mature stalks and sterilized seeds of the industrial hemp plant; none of the foregoing containing cbd except as specifically allowed under federal law
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 01/23/2018 and first used in commerce at least as early as 01/23/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp containing trace amounts of cbd derived solely from the mature stalks and sterilized seeds of the industrial hemp plant; Smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp containing only trace amounts of naturally occurring cbd derived solely from the mature stalks and sterilized seeds of the industrial hemp plant and containing hemp solely with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis; hemp herbs for smoking; herbs for smoking derived from hemp solely with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis; pre-rolled smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp flowers; pre-rolled smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp flowers derived solely from the mature stalks and sterilized seeds of the industrial hemp plant; all of which are derived solely from the mature stalks and sterilized seeds of the industrial hemp plant; none of the foregoing containing cbd except as specifically allowed under federal lawClass 034 for Smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp containing only trace amounts of naturally occurring cbd derived solely from the mature stalks and sterilized seeds of the industrial hemp plant and containing hemp solely with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis; herbs for smoking derived from hemp solely with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis; pre-rolled smoking and electronic cigarette apparatuses, namely, cartridges of herbal hemp flowers derived solely from the mature stalks and sterilized seeds of the industrial hemp plant
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 01/23/2018 and first used in commerce at least as early as 01/23/2018 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 003 (Original Class: 005 ) for Essential oils; essential oils made of terpenes; essential oils made from terpenoid blends and organic terpene profiles; natural essential oils; all of the foregoing solely derived from hemp with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: TERP NATION, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      2500 South Park Road, Bay#3
      Pembroke Park, Florida 33009
      United States
      305-858-8000
      305-858-0008
Proposed: TERP NATION, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      2500 South Park Road, Bay#3
      Pembroke Park, Florida 33009
      United States
      Email Address: XXXX
      
      

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examining Attorney also requested information as to the meaning of "TKO." The meaning has no special trade meaning in the context of Applicant's goods or in the industry, other than being a source-identifier. The acronym "TKO" is an acronym used in the sport of boxing to refer to a "technical knockout." It is also used in other industries and pop culture generally, such as in the song "TKO" by Justin Timberlake.


The owner's/holder's current attorney information: John Cyril Malloy, III. John Cyril Malloy, III of MALLOY & MALLOY, P.L., is located at

      2800 S,W, 3RD AVENUE
      MIAMI, Florida 33129
      United States
The docket/reference number is 8783.40075.
      The phone number is 305-858-8000.
      The fax number is 305-858-8000.
      The email address is Trademarks@malloylaw.com

The owner's/holder's proposed attorney information: John Cyril Malloy, III. Other appointed attorneys are Jennie S. Malloy (a member of the Bar of the State of Florida), Peter A. Matos (a member of the Bar of the State of Florida), Robert M. Downey (a member of the Bar of the State of Florida), Oliver A. Ruiz (a member of the Bar of the State of Florida), Meredith Frank Mendez (a member of the Bar of the State of Florida), William John Eagan (a member of the Bar of the State of Florida), Jonathan Woodard (a member of the Bar of the State of Florida), Mary Beth Hasty (a member of the Bar of the State of Florida), John Vander Wagen ( a member of the Bar of the State of Virginia) and Edan Weiner ( a member of the Bar of the State of Florida),. John Cyril Malloy, III of MALLOY & MALLOY, P.L., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2800 S,W, 3RD AVENUE
      MIAMI, Florida 33129
      United States
The docket/reference number is 8783.40075.
      The phone number is 305-858-8000.
      The fax number is 305-858-8000.
      The email address is JCMalloy@malloylaw.com

John Cyril Malloy, III 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.Correspondence Information (current):
      JOHN CYRIL MALLOY, III
      PRIMARY EMAIL FOR CORRESPONDENCE: jcmalloy@malloylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Trademarks@malloylaw.com; Filing@malloylaw.com; mhasty@malloylaw.com

The docket/reference number is 8783.40075.
Correspondence Information (proposed):
      John Cyril Malloy, III
      PRIMARY EMAIL FOR CORRESPONDENCE: JCMalloy@malloylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Trademarks@malloylaw.com; Filing@malloylaw.com; mhasty@malloylaw.com

The docket/reference number is 8783.40075.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Response Signature
Signature: /John Cyril Malloy, III/     Date: 07/28/2020
Signatory's Name: John Cyril Malloy, III
Signatory's Position: Attorney of record, Florida Bar member

Signatory's Phone Number: 305-858-8000

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:    JOHN CYRIL MALLOY, III
   MALLOY & MALLOY, P.L.
   
   2800 S,W, 3RD AVENUE
   MIAMI, Florida 33129
Mailing Address:    John Cyril Malloy, III
   MALLOY & MALLOY, P.L.
   2800 S,W, 3RD AVENUE
   MIAMI, Florida 33129
        
RAM Sale Number: 88328406
RAM Accounting Date: 07/28/2020
        
Serial Number: 88328406
Internet Transmission Date: Tue Jul 28 17:40:36 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202007281740364
30807-88328406-7404fb5cf9ad61c5c1f9535d5
c9cb446b5e717eda1b692b9a5fde558ba46df6a9
4-CC-40342364-20200728170206395665