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. 88359314 CALM(Standard Characters, see http://uspto.report/TM/88359314/mark.png) has been amended as follows:

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

Please see the text of the argument attached within the evidence section.

EVIDENCE

Original PDF file:
evi_75323237-20191209173531246490_._2019-12-9_CALM_office_action_argument_3T10427.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_75323237-20191209173531246490_._2019-12-9_CALM_OAR_exhibit_A_3T10427.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Essential oils, essential oils for food flavorings; Neutraceuticals for use as a dietary supplement; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oils
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.

Proposed:
Tracked Text Description: Essential oils, essential oils for food flavorings; Neutraceuticals for use as a dietary supplement; Neutraceuticals for use as a dietary supplement, not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, and sachets for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oilsClass 005 for Essential oils, essential oils for food flavorings; Neutraceuticals for use as a dietary supplement, not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, and sachets for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oils
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: Lisa A. Harkins. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      US
The docket/reference number is 3T10427.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com

The applicants proposed attorney information: Lisa A. Harkins. Other appointed attorneys are Zareefa B. Flener, Tracy L. Zawaski. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      United States
The docket/reference number is 3T10427.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com

Lisa A. Harkins 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: LISA A. HARKINS. LISA A. HARKINS of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      US
The docket/reference number is 3T10427.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com; fleneriplaw_docketing@cardinal-ip.com; lharkins@fleneriplaw.com; zflener@fleneriplaw.com

The applicants proposed correspondence information: Lisa A. Harkins. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      United States
The docket/reference number is 3T10427.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com; fleneriplaw_docketing@cardinal-ip.com; zflener@fleneriplaw.com; lharkins@fleneriplaw.com; tzawaski@fleneriplaw.com

SIGNATURE(S)
Response Signature
Signature: /Lisa A. Harkins/     Date: 12/09/2019
Signatory's Name: Lisa A. Harkins
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 3127248874

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:    LISA A. HARKINS
   FLENER IP & BUSINESS LAW
   
   77 W WASHINGTON STREET, SUITE 800
   CHICAGO, Illinois 60602
Mailing Address:    Lisa A. Harkins
   FLENER IP & BUSINESS LAW
   77 W WASHINGTON STREET, SUITE 800
   CHICAGO, Illinois 60602
        
Serial Number: 88359314
Internet Transmission Date: Mon Dec 09 17:39:32 EST 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201912091739328415
13-88359314-700bdf66b1a579ebe4d6b134bf25
3bdb9926ce0b36c948a075b4359492d9f0275b-N
/A-N/A-20191209173531246490