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. 88347215 FX (Stylized and/or with Design, see http://uspto.report/TM/88347215/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: FX (Stylized and/or with Design, see http://uspto.report/TM/88347215/mark.png)
Proposed: FX (Stylized and/or with Design, see mark)
The color(s) gold is/are claimed as a feature of the mark.
The mark consists of gold stylized block letters "FX".

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

In the Office Action issued May 30, 2019, the Examining Attorney refused registration of Applicant’s Application Serial No. 88/347,215 based on the grounds that I. the specimen is unreadable and does not clearly show the applied-for-mark in use in commerce under Sections 1 and 45 of the Lanham Trademark Act; II. possible likelihood of confusion with prior-filed pending U.S. Application Serial No. 88/190,721; and III. the description of the mark is incomplete. Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal of the registration, and in support thereof submits the following amendments and arguments.

Responsive to the Office Action, Applicant hereby amends the filing basis of the application to intent to use under Section 1(b) for which no specimen is required; submits an updated drawing of the mark; and amends the description of the mark. The mark appears substantially the same as the applied-for-mark claimed by the application but has been updated to the form shown on the new drawing submitted with this response. Applicant submits that this update does not constitute a material alteration of the character of the mark or create a different commercial impression.

Applicant has also submitted on November 12, 2019 a Letter of Protest with the USPTO to argue that the mark claimed by prior-filed pending U.S. Application Serial No. 88/190,721 is merely descriptive or mis-descriptive or should have an element disclaimed on that basis, and therefore should not proceed to registration and be used as a citation bar under Section 2(d).

In light of the foregoing, the Applicant respectfully requests that the refusal of registration based on Sections 1 and 45 of the Lanham Trademark Act; prior-filed pending U.S. Application Serial No. 88/190,721; and the requirement to complete the description of the mark be withdrawn, and that the Applicant’s Application No. 88/347,215 be allowed to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dietary and nutritional supplements containing vitamins, minerals and antioxidants
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 12/31/2014 and first used in commerce at least as early as 12/31/2014 , and is now in use in such commerce.

Proposed: Class 005 for Dietary and nutritional supplements containing vitamins, minerals and antioxidants
Deleted Filing Basis: 1(a)
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: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE, LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 111594-T17.

The phone number is 206-757-8014.

The fax number is 2067577014.

The email address is seatm@dwt.com

The applicants proposed attorney information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 111594-T17.

The phone number is 206-757-8014.

The fax number is 2067577014.

The email address is seatm@dwt.com

Matthew E. Moersfelder 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: MATTHEW E. MOERSFELDER. MATTHEW E. MOERSFELDER of DAVIS WRIGHT TREMAINE, LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 111594-T17.

The phone number is 206-757-8014.

The fax number is 2067577014.

The email address is seatm@dwt.com; mmoersfelder@dwt.com; michaelamalone@dwt.com; emilyeskew@dwt.com

The applicants proposed correspondence information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE, LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 111594-T17.

The phone number is 206-757-8014.

The fax number is 2067577014.

The email address is seatm@dwt.com; mmoersfelder@dwt.com; emilyeskew@dwt.com; michaelamalone@dwt.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use FX apart from the mark as shown.


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: /MEM/      Date: 11/18/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Attorney of record, Washington Bar member
Signatory's Phone Number: 206-757-8014


Response Signature
Signature: /MEM/     Date: 11/18/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member

Signatory's Phone Number: 206-757-8014

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:    MATTHEW E. MOERSFELDER
   DAVIS WRIGHT TREMAINE, LLP
   
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
Mailing Address:    Matthew E. Moersfelder
   DAVIS WRIGHT TREMAINE, LLP
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
        
Serial Number: 88347215
Internet Transmission Date: Mon Nov 18 20:22:32 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019111820223219
8869-88347215-70064daddfbf29576b5a26c67d
7d74889c7726bafc81e6c6173c542805557c631b
5-N/A-N/A-20191118190523240282