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. 88348180 CHEF SELECT(Standard Characters, see http://uspto.report/TM/88348180/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Meat, sausage, fish, poultry and game; eggs; milk products; preserved, deep frozen, dried, cooked and processed fruits and vegetables; fresh fruits and vegetables cut into pieces and in the form of prepared salads; delicatessen salads, essentially consisting of the aforementioned goods, also with addition of potatoes and/or pasta and/or rice and/or cereal preparations; ready-to-serve meals included in class 29
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], 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.

Proposed:
Tracked Text Description: Meat, sausage, fish, poultry and game; Meat, uncooked and smoked sausage, fish, not live, poultry and game; eggs; milk products; milk products excluding ice cream, ice milk and frozen yogurt; preserved, deep frozen, dried, cooked and processed fruits and vegetables; fresh fruits and vegetables cut into pieces and in the form of prepared salads; fresh fruits and vegetables cut into pieces and in the form of prepared salads, namely, garden salads, fruit salads, vegetable salads; delicatessen salads, essentially consisting of the aforementioned goods, also with addition of potatoes and/or pasta and/or rice and/or cereal preparations; delicatessen salads, primarily consisting of meat, sausage, poultry, game, fish, egg, vegetable and/or fruit base, also with addition of potatoes and/or pasta and/or rice and/or cereal preparations, namely, tuna salad, taco salad, potato salad, garden salads, chicken salad; ready-to-serve meals included in class 29; ready-to-serve meals ,namely, prepared meals consisting primarily of meat substitutes, combination meal consisting primarily of a meat or vegetable-based entree and a soup or salad for consumption on or off the premises, prepared meals consisting principally of game, ready-to-eat meals comprised primarily of meats, cheese and also including rice, pasta and vegetables; frozen, prepared and packaged meals consisting primarily of meat, fish, poultry or vegetablesClass 029 for Meat, uncooked and smoked sausage, fish, not live, poultry and game; eggs; milk products excluding ice cream, ice milk and frozen yogurt; preserved, deep frozen, dried, cooked and processed fruits and vegetables; fresh fruits and vegetables cut into pieces and in the form of prepared salads, namely, garden salads, fruit salads, vegetable salads; delicatessen salads, primarily consisting of meat, sausage, poultry, game, fish, egg, vegetable and/or fruit base, also with addition of potatoes and/or pasta and/or rice and/or cereal preparations, namely, tuna salad, taco salad, potato salad, garden salads, chicken salad; ready-to-serve meals ,namely, prepared meals consisting primarily of meat substitutes, combination meal consisting primarily of a meat or vegetable-based entree and a soup or salad for consumption on or off the premises, prepared meals consisting principally of game, ready-to-eat meals comprised primarily of meats, cheese and also including rice, pasta and vegetables; frozen, prepared and packaged meals consisting primarily of meat, fish, poultry or vegetables
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Pasta; rice; cereal preparations; sauces (condiments); spices; delicatessen salads essentially consisting of the aforementioned goods, also with addition of processed fruits and/or vegetables; ready-to-serve meals included in class 30
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], 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.

Proposed:
Tracked Text Description: Pasta; rice; cereal preparations; cereal preparations, namely, cereal-based snack foods, cereal bars, cereal-based energy bars, ready-to-eat cereals, biscuits, breads, and cakes made with cereals; sauces (condiments); sauces; spices; delicatessen salads essentially consisting of the aforementioned goods, also with addition of processed fruits and/or vegetables; delicatessen salads essentially consisting of pasta, rice, and cereal, also with addition of processed fruits and/or vegetables, namely, pasta salad, rice salad, macaroni salad; ready-to-serve meals included in class 30; ready-to-serve meals, namely, frozen, prepared or packaged meals consisting primarily of pasta or rice, Noodle-based prepared meals, Combination meals consisting primarily of pasta or rice-based entrees and soup or salad for consumption on or off the premises; frozen, prepared or packaged meals consisting primarily of quinoa, Packaged meal kits and mixes consisting primarily of pasta or riceClass 030 for Pasta; rice; cereal preparations, namely, cereal-based snack foods, cereal bars, cereal-based energy bars, ready-to-eat cereals, biscuits, breads, and cakes made with cereals; sauces; spices; delicatessen salads essentially consisting of pasta, rice, and cereal, also with addition of processed fruits and/or vegetables, namely, pasta salad, rice salad, macaroni salad; ready-to-serve meals, namely, frozen, prepared or packaged meals consisting primarily of pasta or rice, Noodle-based prepared meals, Combination meals consisting primarily of pasta or rice-based entrees and soup or salad for consumption on or off the premises; frozen, prepared or packaged meals consisting primarily of quinoa, Packaged meal kits and mixes consisting primarily of pasta or rice
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Fresh fruits and vegetables, fresh salads
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], 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.

Proposed:
Tracked Text Description: Fresh fruits and vegetables, fresh salads; Fresh fruits and vegetablesClass 031 for Fresh fruits and vegetables
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011380086 registered 06/07/2013 with a renewal date of __________ and an expiration date of 11/28/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP-60689.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed attorney information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP-60689.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

JOHN P. MURTAUGH 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: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP-60689.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed correspondence information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP-60689.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

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


Miscellaneous Statement
Applicant's counsel thanks the Examiner for the careful consideration given the application. Applicant has amended the listing of goods and entered the disclaimer as requested by the Examiner. Applicant submitted a copy of the EUTM registration certificate with the initial filing of this application. Applicant hereby requests that the Examining Attorney delete the Section 1(b) basis for the goods in each Class that the foreign registration covers, if the Section 44(e) basis is accepted for those goods. Since all open items have now been resolved, it is requested that the application now be passed to publication.


SIGNATURE(S)
Response Signature
Signature: /johnpmurtaugh/     Date: 10/25/2019
Signatory's Name: JOHN P. MURTAUGH
Signatory's Position: ATTORNEY OF RECORD, OHIO BAR MEMBER

Signatory's Phone Number: 216-579-1700

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 P. MURTAUGH
   PEARNE & GORDON LLP
   
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
Mailing Address:    JOHN P. MURTAUGH
   PEARNE & GORDON LLP
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
        
Serial Number: 88348180
Internet Transmission Date: Fri Oct 25 15:50:30 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191025155030
006471-88348180-6104173b5f1d06426f311e03
667dd9ead64aaa14a2a3d570d333337a7a19cca-
N/A-N/A-20191025154804498052