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. 88357748 IQOS CARE PLUS (Stylized and/or with Design, see http://uspto.report/TM/88357748/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: IQOS CARE PLUS (Stylized and/or with Design, see http://uspto.report/TM/88357748/mark.png)
Proposed: IQOS CARE PLUS (Stylized and/or with Design, see below )(

)
The color(s) gray and blue is/are claimed as a feature of the mark.
The mark consists of the word IQOS in stylized font with the word CAREPLUS in larger stylized font directly below. The terms IQOS and PLUS appear in gray, and the term CARE appears in blue.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Customer relationship management; customer service management; customer loyalty services; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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: Customer relationship management; customer service management; customer loyalty services for commercial, promotional and advertising purposes; customer loyalty services; all of these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devicesClass 035 for Customer relationship management; customer loyalty services for commercial, promotional and advertising purposes; all of these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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.
Original PDF file:
FRU0-20671224226-134301130_._IQOS_CARE_PLUS_Logo_-_Swiss_Registration__F3236189x96B9E_.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance services; insurance services relating to the service and repair of apparatus; warranty services; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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: Insurance services; Insurance claims processing services relating to the service, repair, and replacement of apparatus; insurance services relating to the service and repair of apparatus; warranty services, namely, claims administration in the nature of processing warranty claims; warranty services; all of these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devicesClass 036 for Insurance claims processing services relating to the service, repair, and replacement of apparatus; warranty services, namely, claims administration in the nature of processing warranty claims; all of these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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.
Original PDF file:
FRU1-20671224226-134301130_._IQOS_CARE_PLUS_Logo_-_Swiss_Registration__F3236189x96B9E_.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Maintenance and repair of electronic cigarettes, tobacco heating devices and electronic smoking devices; maintenance and repair of batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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: Class 037 for Maintenance and repair of electronic cigarettes, tobacco heating devices and electronic smoking devices; maintenance and repair of batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices; all these services being exclusively related to electronic cigarettes, tobacco heating devices, electronic smoking devices and batteries and battery chargers for electronic cigarettes, tobacco heating devices and electronic smoking devices
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 79738/2018 filed 10/08/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 728311 registered 03/14/2019 with a renewal date of __________ and an expiration date of __________ ], 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.
Original PDF file:
FRU2-20671224226-134301130_._IQOS_CARE_PLUS_Logo_-_Swiss_Registration__F3236189x96B9E_.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

The applicant's current attorney information: Tamar Niv Bessinger. Tamar Niv Bessinger of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FL.
      NEW YORK, New York 10036
      US
The docket/reference number is PMPS 1904723.

The applicants proposed attorney information: Tamar Niv Bessinger. Other appointed attorneys are Lawrence E. Apolzon, Andrew N. Fredbeck, Allison Strickland Ricketts, Nancy Sabarra, Karen Lim, Charles T.J. Weigell, Ashford Tucker. Tamar Niv Bessinger of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      151 West 42nd St., 17th Fl.
      New York, New York 10036
      United States
The docket/reference number is PMPS 1904723.

The email address is bessinger-docket@fzlz.com

Tamar Niv Bessinger 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: TAMAR NIV BESSINGER. TAMAR NIV BESSINGER of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FL.
      NEW YORK, New York 10036
      US
The docket/reference number is PMPS 1904723.

The phone number is 212-813-5900.

The fax number is 212-813-5901.

The email address is bessinger-docket@fzlz.com

The applicants proposed correspondence information: Tamar Niv Bessinger. Tamar Niv Bessinger of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      151 West 42nd St., 17th Fl.
      New York, New York 10036
      United States
The docket/reference number is PMPS 1904723.

The phone number is 212-813-5900.

The fax number is 212-813-5901.

The email address is bessinger-docket@fzlz.com

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


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_20671224226-134301130_._IQOS_CARE_PLUS_Logo_-_Signed_Declaration__F3263858x96B9E_.pdf
Converted PDF file(s) (4 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signatory's Name: Jonathan Critchley
Signatory's Position: Authorised Attorney

Signatory's Name: Jessica Axelson
Signatory's Position: Authorised Attorney

Response Signature
Signature: /tnb/     Date: 10/29/2019
Signatory's Name: Tamar Niv Bessinger
Signatory's Position: Attorney of record, New York State bar member

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:    TAMAR NIV BESSINGER
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   4 TIMES SQUARE, 17TH FL.
   NEW YORK, New York 10036
Mailing Address:    Tamar Niv Bessinger
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 West 42nd St., 17th Fl.
   New York, New York 10036
        
Serial Number: 88357748
Internet Transmission Date: Tue Oct 29 15:05:41 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201910291505411
61618-88357748-700553a314169d31a158e1e5a
bc16a9950b53490758ad80d5527a4d12625515c2
-N/A-N/A-20191029134301130005