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. 88377144 STIX(Standard Characters, see http://uspto.report/TM/88377144/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of response to Office Action in connection with descriptiveness refusal; Screenshots from applicant's website has been attached.
Original PDF file:
evi_232411581-20191218155326203951_._stix_filing.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_232411581-20191218155326203951_._stix_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_232411581-20191218155326203951_._stix_2.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_232411581-20191218155326203951_._stix_3.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_232411581-20191218155326203951_._stix_4.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_232411581-20191218155326203951_._stix_5.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_232411581-20191218155326203951_._stix_6.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Women's home healthcare products, pregnancy test kits for home use; on-line store for women's home healthcare products, including pregnancy test kits for home use; subscription-based order fulfillment services in the field of women's home healthcare products, including pregnancy test kits for home 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 02/15/2019 and first used in commerce at least as early as 02/15/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Women's home healthcare products, pregnancy test kits for home use; Women's home healthcare products, namely pregnancy kits for home use and ovulation kits for home use; on-line store for women's home healthcare products, including pregnancy test kits for home use; subscription-based order fulfillment services in the field of women's home healthcare products, including pregnancy test kits for home useClass 005 for Women's home healthcare products, namely pregnancy kits for home use and ovulation kits for home use
Deleted Filing Basis: 1(a)
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for On-line store for women's home healthcare products, including pregnancy test kits for home use and ovulation kits for home use; subscription order fulfillment services in the filed of women's home healthcare products, including pregnancy test kits for home use and ovulation kits for home use
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: Joseph W. Berenato, III. Joseph W. Berenato, III of BERENATO & WHITE, LLC, is located at

      6550 ROCK SPRING DRIVE, SUITE 240
      BETHESDA, Maryland 20817
      US
The docket/reference number is 6545.101.

The phone number is 240-330-4520.

The fax number is 301-896-0607.

The email address is uspto.filings@bw-iplaw.com

The applicants proposed attorney information: Joseph W. Berenato, III. Joseph W. Berenato, III of BERENATO & WHITE, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6550 ROCK SPRING DRIVE, SUITE 240
      BETHESDA, Maryland 20817
      United States
The docket/reference number is 6545.101.

The phone number is 240-330-4520.

The fax number is 301-896-0607.

The email address is uspto.filings@bw-iplaw.com

Joseph W. Berenato, III 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: JOSEPH W. BERENATO, III. JOSEPH W. BERENATO, III of BERENATO & WHITE, LLC, is located at

      6550 ROCK SPRING DRIVE, SUITE 240
      BETHESDA, Maryland 20817
      US
The docket/reference number is 6545.101.

The phone number is 240-330-4520.

The fax number is 301-896-0607.

The email address is uspto.filings@bw-iplaw.com

The applicants proposed correspondence information: Joseph W. Berenato, III. Joseph W. Berenato, III of BERENATO & WHITE, LLC, is located at

      6550 ROCK SPRING DRIVE, SUITE 240
      BETHESDA, Maryland 20817
      United States
The docket/reference number is 6545.101.

The phone number is 240-330-4520.

The fax number is 301-896-0607.

The email address is uspto.filings@bw-iplaw.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /jwb/      Date: 12/18/2019
Signatory's Name: Joseph W. Berenato, III
Signatory's Position: Attorney
Signatory's Phone Number: 240.330.4520


Response Signature
Signature: /jwb/     Date: 12/18/2019
Signatory's Name: Joseph W. Berenato, III
Signatory's Position: Attorney

Signatory's Phone Number: 240.330.4520

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:    JOSEPH W. BERENATO, III
   BERENATO & WHITE, LLC
   
   6550 ROCK SPRING DRIVE, SUITE 240
   BETHESDA, Maryland 20817
Mailing Address:    Joseph W. Berenato, III
   BERENATO & WHITE, LLC
   6550 ROCK SPRING DRIVE, SUITE 240
   BETHESDA, Maryland 20817
        
RAM Sale Number: 88377144
RAM Accounting Date: 12/18/2019
        
Serial Number: 88377144
Internet Transmission Date: Wed Dec 18 16:07:17 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20191218160717228
457-88377144-70049c2f637b69d24aa621818a5
60a0b191cef8a66a705d232f5b772bf7bbb260c2
-CC-07153854-20191218155326203951