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. 88350204 JOMARA (Stylized and/or with Design, see http://uspto.report/TM/88350204/mark.png) has been amended as follows:

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

Applicant is grateful for the Examining Attorney’s letter dated June 4, 2019 and the Office Action.

 

In line with the Examining Attorney’s suggestions, Applicant respectfully requests to amend the specification of goods to read as follows:

 

Class 30 - Candy; almond confectionary, namely, confectionery made of sugar also containing nuts; cocoa-based beverages; caramels; chocolate; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; cookies; fondants; gingerbread; halvah; liquorice; non-medicated lozenges; macaroons; marzipan; peanut confectionary, namely, confectionery made of sugar also containing nuts; peppermint sweets; petits fours; pralines; sugar confectionary, namely, confectionery made of sugar.

 

The items “Cereal-based snack food; biscuits; chewing gum; chutneys; cinnamon; cocoa products, namely, cocoa mixes, cocoa spreads; coffee; unroasted coffee; condiments, namely, pesto, mustard, chili pepper sauces; dressing for salad; honey; muesli; oat flakes; oatmeal; pastries; pastry; petit beurre biscuits; ginger; malt biscuits; pepper; sauces; spices; sugar; tea” have been divided into a separate, Intent to Use application and a request therefor has been submitted with the USPTO under separate cover.

 

There are no changes to the Class 29 list of goods.

 

In addition, in response to the Examining Attorney’s inquiry, Applicant respectfully submits that the wording “JOMARA” or its equivalent in Arabic characters has no meaning or significance in the relevant industry or as applied to Applicant’s goods.  Further, this wording is not a term of art within Applicant’s industry nor does it identify a geographic place or has any meaning in a foreign language.

 

Finally, responding to the Examining Attorney’s questions, Applicant respectfully submits that the wording “JOMARA” or its equivalent in Arabic characters has no meaning other than trademark significance and, in particular, does not designate a type of date or a type of food product.

 

In view of the above, favourable outcome of examination and passage of application to publication is respectfully requested.  If any additional information or clarifications are required, the Examining Attorney is respectfully requested to contact the undersigned to resolve any matter in an Examiner’s Amendment, if applicable.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Cereal-based snack food, candy, almond confectionary; cocoa-based beverages; biscuits, caramel, chewing gum, chocolate, chutneys, cinnamon; cocoa products, namely, cocoa mixes, cocoa spreads; coffee, unroasted coffee; condiments, namely, pesto, mustard, chili pepper sauces; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; cookies, dressing for salad, fondants, ginger, gingerbread, halvah, honey, liquorice, non-medicated lozenges, macaroons, malt biscuits, marzipan, muesli, oat flakes, oatmeal, pastries, pastry, peanut confectionary, pepper, peppermint sweets, petit beurre biscuits, petits fours, pralines, sauces, spices, sugar, sugar confectionary, tea
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Saudi Arabia registration number 142806655 registered 04/23/2008 with a renewal date of __________ and an expiration date of 12/12/2026 ], 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: Cereal-based snack food, candy, almond confectionary; Candy; almond confectionary, namely, confectionery made of sugar also containing nuts; biscuits, caramel, chewing gum, chocolate, chutneys, cinnamon; cocoa-based beverages; cocoa products, namely, cocoa mixes, cocoa spreads; caramels; coffee, unroasted coffee; chocolate; condiments, namely, pesto, mustard, chili pepper sauces; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; cookies; cookies, dressing for salad, fondants, ginger, gingerbread, halvah, honey, liquorice, non-medicated lozenges, macaroons, malt biscuits, marzipan, muesli, oat flakes, oatmeal, pastries, pastry, peanut confectionary, pepper, peppermint sweets, petit beurre biscuits, petits fours, pralines, sauces, spices, sugar, sugar confectionary, tea; fondants; gingerbread; halvah; liquorice; non-medicated lozenges; macaroons; marzipan; peanut confectionary, namely, confectionery made of sugar also containing nuts; peppermint sweets; petits fours; pralines; sugar confectionary, namely, confectionery made of sugarClass 030 for Candy; almond confectionary, namely, confectionery made of sugar also containing nuts; cocoa-based beverages; caramels; chocolate; confectionery, namely, confectionery made of sugar, crystal sugar pieces, confectionery chips for baking, chocolate confectionery made of sugar; cookies; fondants; gingerbread; halvah; liquorice; non-medicated lozenges; macaroons; marzipan; peanut confectionary, namely, confectionery made of sugar also containing nuts; peppermint sweets; petits fours; pralines; sugar confectionary, namely, confectionery made of sugar
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Saudi Arabia registration number 142806655 registered 04/23/2008 with a renewal date of __________ and an expiration date of 12/12/2026 ], 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: Max Vern. Max Vern of AMSTER, ROTHSTEIN & EBENSTEIN LLP, is located at

      90 PARK AVENUE
      NEW YORK, New York 10016
      US
The docket/reference number is 80213/10.

The phone number is 212-336-8000.

The fax number is (212) 336-8001.

The email address is ptodocket@arelaw.com

The applicants proposed attorney information: Max Vern. Max Vern of AMSTER, ROTHSTEIN & EBENSTEIN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      90 PARK AVENUE
      NEW YORK, New York 10016
      United States
The docket/reference number is 80213/10.

The phone number is 212-336-8000.

The fax number is (212) 336-8001.

The email address is ptodocket@arelaw.com

Max Vern 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: MAX VERN. MAX VERN of AMSTER, ROTHSTEIN & EBENSTEIN LLP, is located at

      90 PARK AVENUE
      NEW YORK, New York 10016
      US
The docket/reference number is 80213/10.

The phone number is 212-336-8000.

The fax number is (212) 336-8001.

The email address is ptodocket@arelaw.com

The applicants proposed correspondence information: Max Vern. Max Vern of AMSTER, ROTHSTEIN & EBENSTEIN LLP, is located at

      90 PARK AVENUE
      NEW YORK, New York 10016
      United States
The docket/reference number is 80213/10.

The phone number is 212-336-8000.

The fax number is (212) 336-8001.

The email address is ptodocket@arelaw.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
The wording "JOMARA" or its equivalent in Arabic characters appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Max Vern/     Date: 11/20/2019
Signatory's Name: Max Vern
Signatory's Position: Attorney of Record, NY Bar Member

Signatory's Phone Number: (212) 336-8000

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:    MAX VERN
   AMSTER, ROTHSTEIN & EBENSTEIN LLP
   
   90 PARK AVENUE
   NEW YORK, New York 10016
Mailing Address:    Max Vern
   AMSTER, ROTHSTEIN & EBENSTEIN LLP
   90 PARK AVENUE
   NEW YORK, New York 10016
        
Serial Number: 88350204
Internet Transmission Date: Wed Nov 20 18:03:43 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191120180343
982912-88350204-700892d779622c31a2e38265
e211e5899f4bde623ec28e1e0cd381ac1e2efc26
4-N/A-N/A-20191120175440844932