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. 88370256 JAPANESE & ORIENTAL BEETLE TRAP (Stylized and/or with Design, see http://uspto.report/TM/88370256/mark.png) has been amended as follows:

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

In response to the Office Action dated May 16, 2019, Applicant (1) confirms the mark is two-dimensional, (2) enters a disclaimer and (3) addresses the specimen and submits new specimens.

The Mark is Two-Dimensional

The mark applied for is a two-dimensional design of a product label shown flat that will be used as product packaging. The mark description has been amended accordingly as shown in the Description of the Mark.

Specimen of Use

Applicant respectfully requests the Examining Attorney reconsider the rejection of the specimen submitted in support of registration of the Applicant’s mark for Applicant’s goods in Class 5. 

The Examining Attorney rejected the specimen alleging that the specimen does not show use of the mark with biopesticides. 

Applicant responds by stating for the record that Applicant’s goods are considered biopesticides by the U.S. Environmental Protection Agency (EPA) and as such are registered with the EPA.  Biopesticide products are regulated by the EPA and require EPA approval before they may be sold to the public.  As claimed in the application, Applicant’s goods include biopesticides for domestic use.  Applicant’s goods are an insect trap as the Examining Attorney notes.  However, because of the attractant in combination with the trap device the Applicant registered, as required, the subject goods with the EPA as a pesticide product.  See the attached information from the EPA website, including applicable CFR regulations and the information on regulation and definitions of pesticides from the Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA).  See, Section 152.500(a), which defines a device subject to registration as any product designed to “mitigate any pest [insect].”

Applicant submits that the specimen submitted shows use of the mark for goods in International Class 5 and respectfully requests that the rejection be withdrawn.

Conclusion

The Applicant has addressed and rectified all of the issues raised in the Office Action and respectfully requests that the Examining Attorney withdraw the rejection and approve the mark for publication.  If the Examining Attorney has any remaining questions, please contact applicant's attorney.

EVIDENCE
Evidence in the nature of EPA Evidence to support the Class 5 goods in the application has been attached.
Original PDF file:
evi_502391710-20191015115718813684_._58876_eCFR___Code_of_Federal_Regulations.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_502391710-20191015115718813684_._58876_EPA_Evidence.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_502391710-20191015115718813684_._cide__Fungicide__and_Rodenticide_Act__FIFRA__and_Federal_....pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Biopesticides for domestic use
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.

Proposed: Class 005 for Biopesticides for domestic use
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 005 . The specimen(s) submitted consists of photos of the mark as used on packaging for the goods .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Insect traps
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.

Proposed: Class 021 for Insect traps
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 03/29/2019 and first used in commerce at least as early as 03/29/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 021 . The specimen(s) submitted consists of photos of the mark as used on packaging for the goods .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

The applicant's current attorney information: Everett E. Fruehling. Everett E. Fruehling of CHRISTENSEN O'CONNOR JOHNSON KINDNESS, is located at

      1201 THIRD AVENUE, SUITE 3600
      SEATTLE, Washington 98101
      US
The docket/reference number is STIL-2-58900.

The phone number is 206-682-8100.

The fax number is 206-224-0779.

The email address is efiling@cojk.com

The applicants proposed attorney information: Everett E. Fruehling. Other appointed attorneys are Jerald E. Nagae, Reg. No. 29,418; George E. Renzoni, Ph.D., Reg. No. 37,919; John D. Denkenberger, Reg. No. 44,060; Everett E. Fruehling; Brandon C. Stallman, Reg. No. 46,468; Laura A. Cruz, Reg. No. 46,649; Ryan E. Dodge, Jr., Reg. No. 42,492; Brian W. Poor, Reg. No. 32,928; Margie B. Aoki, Reg. No. 62,644; Matthew D. Balint, Reg. No. 61,038; Llewellyn Rhys Lawson, Reg. No. 57,869; David P. Sheldon, Reg. No. 62,494; Brian F. McMahon; Melissa A. Nowak, Reg. No. 68,088; B. Casey Fitzpatrick, Reg. No. 66,847, Jadran Adrian Mihailovic, Reg. No. 57,874; James Y. Go, Reg. No. 40,621; and Cory G. Claassen, Reg. No. 50,296; Thomas S. (Stasiu) Nowak, Reg. No. 67,998; Jennifer R. Ashton. Everett E. Fruehling of CHRISTENSEN O'CONNOR JOHNSON KINDNESS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1201 THIRD AVENUE, SUITE 3600
      SEATTLE, Washington 98101
      United States
The docket/reference number is STIL-2-58900.

The phone number is 206-682-8100.

The fax number is 206-224-0779.

The email address is efiling@cojk.com

Everett E. Fruehling 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: EVERETT E. FRUEHLING. EVERETT E. FRUEHLING of CHRISTENSEN O'CONNOR JOHNSON KINDNESS, is located at

      1201 THIRD AVENUE, SUITE 3600
      SEATTLE, Washington 98101
      US
The docket/reference number is STIL-2-58900.

The phone number is 206-682-8100.

The fax number is 206-224-0779.

The email address is efiling@cojk.com

The applicants proposed correspondence information: Everett E. Fruehling. Everett E. Fruehling of CHRISTENSEN O'CONNOR JOHNSON KINDNESS, is located at

      1201 THIRD AVENUE, SUITE 3600
      SEATTLE, Washington 98101
      United States
The docket/reference number is STIL-2-58900.

The phone number is 206-682-8100.

The fax number is 206-224-0779.

The email address is efiling@cojk.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use JAPANESE & ORIENTAL BEETLE TRAP apart from the mark as shown.


Description of mark
The mark consists of a two-dimensional design applied to the front and back of the goods as packaging. The design at the bottom is applied to the front of the goods and consists of a horizontally oriented rectangle in the color light green within the rectangle are two rectangles with outward facing curved edges that represent openings; above it is a white horizontally oriented rectangle that is intended to be clear; above is a horizontally oriented rectangle where the bottom half of the rectangle consists of a rectangle bisected by a green arch where the top half of the bisected rectangle is in gray color with a series of light gray squares superimposed on the gray background; with the wording "JAPANESE & ORIENTAL BEETLE TRAP" appears in black color superimposed on the light gray squares and gray background; above the "P" in "TRAP" is a stylized design of a beetle in black and white with a red shell; the bottom half of the bisected rectangle has a light green background; top half of the larger vertically oriented rectangle consists of a cross hatch design composed of black lines and the white coloring in this design represents transparency; the dotted line is not claimed as a feature of the mark it is to illustrate where the design applied to the front of the goods is separated from the design applied to the back of the goods. The design at the top is applied to the back of the goods and consists of a cross hatch design composed of black lines and the white coloring in this design represents transparency; a horizontally oriented light green rectangle divides a white field that is intended to show transparency; in that transparent field is the number "1" in white color set within a black square and a stylized black and white design of the goods with light green dots to illustrate operation of opening trap; next to it is the number "2" in white on a black square and a stylized design of a hands holding a stylized trap design; next to it is the number "3" in white on a black square color next to a stylized design of a trap; next to it is the number "4" in white in a black square and a stylized design of the trap; all of the above is contained in a gray rectangle and intended to illustrate instructions for using trap; the remainder of the design is clear with two small horizontally oriented rectangles with outward facing curved edges that represent openings.

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: /Jennifer R. Ashton/      Date: 10/15/2019
Signatory's Name: Jennifer R. Ashton
Signatory's Position: Of Counsel, Christensen O'Connor Johnson Kindness, Washington State bar member
Signatory's Phone Number: 206 695.1614


Response Signature
Signature: /Jennifer R. Ashton/     Date: 10/15/2019
Signatory's Name: Jennifer R. Ashton
Signatory's Position: Of Counsel, Christensen O'Connor Johnson Kindness, Washington State bar member

Signatory's Phone Number: 206-695-1614

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:    EVERETT E. FRUEHLING
   CHRISTENSEN O'CONNOR JOHNSON KINDNESS
   
   1201 THIRD AVENUE, SUITE 3600
   SEATTLE, Washington 98101
Mailing Address:    Everett E. Fruehling
   CHRISTENSEN O'CONNOR JOHNSON KINDNESS
   1201 THIRD AVENUE, SUITE 3600
   SEATTLE, Washington 98101
        
Serial Number: 88370256
Internet Transmission Date: Tue Oct 15 13:30:30 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191015133030995
002-88370256-6101b82a593f4952ae73357beea
9204c582d5eac2e314b6302f7641ba5d53e8-N/A
-N/A-20191015115718813684