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. 88377604 VOLARIS(Standard Characters, see http://uspto.report/TM/88377604/mark.png) has been amended as follows:

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

In the Office Action dated June 20, 2019, the Examining Attorney initially refuses registration of the application based on prior registration nos. 3712524 and 3712525 for VOLARIS. Applicant respectfully submits that a confirmatory assignment has been filed and recorded for these cited registrations updating the ownership to Controladora Vuela Compana de Aviacion, S.A.B. de C.V. Accordingly, Applicant respectfully requests the refusal based on Section 2(d) be removed.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising through any means, commercial business management, commercial administration, office work and administrative management related to air transportation services, aeronautical transportation services, passenger transportation, pilot services, aircraft rental, and transportation services
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: Advertising through any means, commercial business management, commercial administration, office work and administrative management related to air transportation services, aeronautical transportation services, passenger transportation, pilot services, aircraft rental, and transportation services; Advertising through all public communication means; commercial business management; commercial administration, namely, business office work and administrative management related to air transportation services, aeronautical transportation services, passenger transportation, pilot services, aircraft rental, and transportation servicesClass 035 for Advertising through all public communication means; commercial business management; commercial administration, namely, business office work and administrative management related to air transportation services, aeronautical transportation services, passenger transportation, pilot services, aircraft rental, and transportation services
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 proposes to amend the following class of goods/services in the application:
Current: Class 039 for Air transportation services; aeronautical transportation services; information regarding transportation; transportation of passengers; pilot services; aircraft rental; transportation services
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: Air transportation services; aeronautical transportation services; information regarding transportation; transportation of passengers; pilot services; piloting services; aircraft rental; transportation services; transportation services, namely, airline transportation services, transportation reservation services, and transportation consulting servicesClass 039 for Air transportation services; aeronautical transportation services; information regarding transportation; transportation of passengers; piloting services; aircraft rental; transportation services, namely, airline transportation services, transportation reservation services, and transportation consulting services
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: Richard J. Groos. Richard J. Groos of KING & SPALDING LLP, is located at

      500 WEST 2ND STREET, 1800
      AUSTIN, Texas 78701
      US

The phone number is 512-457-2018.

The fax number is 512-457-2100.

The email address is aotrademark@kslaw.com

The applicants proposed attorney information: Richard J. Groos. Other appointed attorneys are Sheri M. Hunter, Brandon M. Ress, Lena Colin and any attorneys with the firm. Richard J. Groos of King & Spalding LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      500 West 2nd Street, Suite 1800
      Austin, Texas 78701
      United States

The phone number is 512-457-2018.

The fax number is 512-457-2100.

The email address is aotrademark@kslaw.com

Richard J. Groos 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: RICHARD J. GROOS. RICHARD J. GROOS of KING & SPALDING LLP, is located at

      500 WEST 2ND STREET, 1800
      AUSTIN, Texas 78701
      US

The phone number is 512-457-2018.

The fax number is 512-457-2100.

The email address is aotrademark@kslaw.com; emolson@kslaw.com

The applicants proposed correspondence information: Richard J. Groos. Richard J. Groos of King & Spalding LLP, is located at

      500 West 2nd Street, Suite 1800
      Austin, Texas 78701
      United States

The phone number is 512-457-2018.

The fax number is 512-457-2100.

The email address is aotrademark@kslaw.com; emolson@kslaw.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
VOLARIS 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. The word(s) VOLARIS has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Sheri M. Hunter/     Date: 08/28/2019
Signatory's Name: Sheri M. Hunter
Signatory's Position: Attorney of Record, Texas Bar Member

Signatory's Phone Number: 512-457-2046

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:    RICHARD J. GROOS
   KING & SPALDING LLP
   
   500 WEST 2ND STREET, 1800
   AUSTIN, Texas 78701
Mailing Address:    Richard J. Groos
   King & Spalding LLP
   500 West 2nd Street, Suite 1800
   Austin, Texas 78701
        
Serial Number: 88377604
Internet Transmission Date: Wed Aug 28 19:19:53 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019082819195370
3683-88377604-610194fa8b677ac371d86c0a28
03b42b26f8ebeb9f3adff1474ab342c7d45d1223
-N/A-N/A-20190828191700945153