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. 88390388 ACTIMEL(Standard Characters, see http://uspto.report/TM/88390388/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Milk; milk powder; gelled; flavoured and whipped milk; milk products, namely, milk based desserts; yoghurt; yoghurt drinks; cottage cheese; plain and flavoured beverages consisting principally of milk; plain and flavoured beverages consisting principally of milk products; milk beverages consisting principally of milk; milky beverages containing fruit; fermented plain and fermented flavoured milky products, namely, fermented yoghurts, flavoured fermented yoghurts, fermented milk-based beverages and flavoured fermented milk-based beverages; milk substitutes, milk substitutes of plant origin; milk and milk products and their substitutes of plant origin; fruit drinks composed mainly of milk products; vegetable drinks composed mainly of milk products
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 98763476 registered 12/09/1998 with a renewal date of 10/31/2008 and an expiration date of 12/09/2028 ], 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: Milk; Milk, milk powder, jellied milk, flavoured and whipped milk; milk powder; milk products, namely, milk based milk products excluding ice cream, ice milk and frozen yogurt; gelled; yoghurt; flavoured and whipped milk; yoghurt drinks; milk products, namely, milk based desserts; cottage cheese; plain and vegetable flavoured beverages having a milk base; milk beverages consisting principally of milk; milky beverages containing fruit; plain and flavoured beverages consisting principally of milk; fermented plain and fermented flavoured milky products, namely, fermented yoghurts, flavoured fermented yoghurts, fermented milk-based beverages and flavoured fermented milk-based beverages; plain and flavoured beverages consisting principally of milk products; milk substitutes; milk substitutes of plant origin, namely, almond milk, coconut milk, oat milk, rice milk, soy milk, cashew milk, peanut milk, nut milk, cereal-based milk; milk and milk products and their substitutes of plant origin, namely, almond milk, coconut milk, oat milk, rice milk, soy milk, cashew milk, peanut milk, nut milk, cereal-based milk; milk drinks containing fruit; milk substitutes, milk substitutes of plant origin; milk drinks containing vegetables; milk and milk products and their substitutes of plant origin; vegetable-based food beverages; fruit drinks composed mainly of milk products; vegetable drinks composed mainly of milk productsClass 029 for Milk, milk powder, jellied milk, flavoured and whipped milk; milk products, namely, milk based milk products excluding ice cream, ice milk and frozen yogurt; yoghurt; yoghurt drinks; cottage cheese; plain and vegetable flavoured beverages having a milk base; milk beverages consisting principally of milk; milky beverages containing fruit; fermented plain and fermented flavoured milky products, namely, fermented yoghurts, flavoured fermented yoghurts, fermented milk-based beverages and flavoured fermented milk-based beverages; milk substitutes; milk substitutes of plant origin, namely, almond milk, coconut milk, oat milk, rice milk, soy milk, cashew milk, peanut milk, nut milk, cereal-based milk; milk and milk products and their substitutes of plant origin, namely, almond milk, coconut milk, oat milk, rice milk, soy milk, cashew milk, peanut milk, nut milk, cereal-based milk; milk drinks containing fruit; milk drinks containing vegetables; vegetable-based food beverages
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 98763476 registered 12/09/1998 with a renewal date of 10/31/2008 and an expiration date of 12/09/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for Still mineral waters; sparkling mineral waters; still non-mineral waters; sparkling non-mineral waters; fruit juices; vegetable juices; fruit drinks; vegetable drinks; lemonades; sodas; sorbet in the nature of beverages; syrups and other preparations for making beverages, namely, syrups and powders used in the preparation of soft drinks and fruit drinks, alcohol-free fruit extracts for use in the preparation of beverages, alcohol-free vegetable extracts for use in the preparation of beverages; alcohol-free drinks, namely, smoothies; plant-based beverages; vegetable beverages
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 98763476 registered 12/09/1998 with a renewal date of 10/31/2008 and an expiration date of 12/09/2028 ], 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: Still mineral waters; sparkling mineral waters; still non-mineral waters; sparkling non-mineral waters; fruit juices; vegetable juices; fruit drinks; vegetable drinks; lemonades; sodas; soft drinks, namely, sodas; sorbet in the nature of beverages; syrups and other preparations for making beverages, namely, syrups and powders used in the preparation of soft drinks and fruit drinks, alcohol-free fruit extracts for use in the preparation of beverages, alcohol-free vegetable extracts for use in the preparation of beverages; syrups and other preparations for making beverages, namely, syrups and powders used in the preparation of soft drinks and fruit drinks; alcohol-free fruit extracts for use in the preparation of beverages, alcohol-free vegetable extracts for use in the preparation of beverages; plant-based beverages; alcohol-free drinks, namely, smoothies; vegetable beverages; fruit and vegetable plant-based beverages, namely, vegetable juices, fruit juices, almond-based beverages other than milk substitutes, coconut based beverages other than milk substitutes, peanut based beverages other than milk substitutes, fruit and vegetable plant or nut based beverages other than milk substitutes, soy based beverages other than milk substitutes; vegetable juice beveragesClass 032 for Still mineral waters; sparkling mineral waters; still non-mineral waters; sparkling non-mineral waters; fruit juices; vegetable juices; fruit drinks; vegetable drinks; lemonades; soft drinks, namely, sodas; sorbet in the nature of beverages; syrups and other preparations for making beverages, namely, syrups and powders used in the preparation of soft drinks and fruit drinks; alcohol-free fruit extracts for use in the preparation of beverages, alcohol-free vegetable extracts for use in the preparation of beverages; alcohol-free drinks, namely, smoothies; fruit and vegetable plant-based beverages, namely, vegetable juices, fruit juices, almond-based beverages other than milk substitutes, coconut based beverages other than milk substitutes, peanut based beverages other than milk substitutes, fruit and vegetable plant or nut based beverages other than milk substitutes, soy based beverages other than milk substitutes; vegetable juice beverages
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 98763476 registered 12/09/1998 with a renewal date of 10/31/2008 and an expiration date of 12/09/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney information: Ann K. Ford. Ann K. Ford of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

The applicants proposed attorney information: Ann K. Ford. Other appointed attorneys are Thomas E. Zutic, Ryan C. Compton, John M. Nading, David M. Kramer, Eunice R. Chung, Ashley H. Joyce, James K. S. Stewart, Alberto Zacapa and Naomi E. Abraham. Ann K. Ford of DLA PIPER LLP (US), 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 EIGHTH STREET NW
      WASHINGTON, District of Columbia 20004
      United States

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

Ann K. Ford 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: ANN K. FORD. ANN K. FORD of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

The applicants proposed correspondence information: Ann K. Ford. Ann K. Ford of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET NW
      WASHINGTON, District of Columbia 20004
      United States

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

SIGNATURE(S)
Response Signature
Signature: /David M. Kramer/     Date: 11/14/2019
Signatory's Name: David M. Kramer
Signatory's Position: Attorney of Record; District of Columbia Bar Member

Signatory's Phone Number: 2027994153

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:    ANN K. FORD
   DLA PIPER LLP (US)
   
   500 EIGHTH STREET NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   500 EIGHTH STREET NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88390388
Internet Transmission Date: Thu Nov 14 16:23:08 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201911141623089955
43-88390388-70056c0d534dd7d5a206f3072a25
880d34a6877f581e929295c9525c94369ca-N/A-
N/A-20191114160853427790