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. 88339825 DISTILLATA (Stylized and/or with Design, see http://uspto.report/TM/88339825/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration on the grounds that the mark DISTILLATA is allegedly merely descriptive of the applicant's water-related goods and services. Although applicant disagrees with this assessment, in order to move the application to allowance, applicant hereby submits a claim of acquired distinctiveness based on 5 years of exclusive and continuous use of the applied-for mark in U.S. commerce.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for drinking water dispensers
Original Filing Basis:
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: drinking water dispensers; temperature-controlled drinking water dispensersClass 011 for temperature-controlled drinking water dispensers
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Drinking fountain and water bottle filling station installation and repair services
Original Filing Basis:
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Drinking fountain and water bottle filling station installation and repair services; swimming-pool maintenance in the nature of pool-filling servicesClass 037 for Drinking fountain and water bottle filling station installation and repair services; swimming-pool maintenance in the nature of pool-filling services
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for delivery of bottled water to homes and offices; delivery of coffee to offices; pool filling services; delivery of water softener salt to homes and offices; delivery of road salt to homes and offices
Original Filing Basis:
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: delivery of bottled water to homes and offices; delivery of coffee to offices; pool filling services; pool filling services, namely, delivery of pool water; delivery of water softener salt to homes and offices; delivery of road salt to homes and officesClass 039 for delivery of bottled water to homes and offices; delivery of coffee to offices; pool filling services, namely, delivery of pool water; delivery of water softener salt to homes and offices; delivery of road salt to homes and offices
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Translation
The English translation of DISTILLATA in the mark is DISTILLED.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Nicholas J. Gingo/      Date: 07/22/2019
Signatory's Name: Nicholas J. Gingo
Signatory's Position: Attorney of Record, Ohio bar member
Signatory's Phone Number: 2166211113


Response Signature
Signature: /Nicholas J. Gingo/     Date: 07/22/2019
Signatory's Name: Nicholas J. Gingo
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 2166211113

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88339825
Internet Transmission Date: Mon Jul 22 14:43:38 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190722144338552
533-88339825-62095edfd6c777f7fe02b5353af
1138fa2e690b8c2c1438f4f2c116d414b2e5c1-N
/A-N/A-20190722143933110199