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. 88392234 PP (Stylized and/or with Design, see http://uspto.report/TM/88392234/mark.png) has been amended as follows:

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

Applicant requests that this application be suspended to await issuance of the foreign registration to perfect the Section 44(e) filing basis.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Soap; Non-medicated soap; perfumery, essential oils, cosmetics, hair lotions; dentifricesClass 003 for Non-medicated soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Vehicles, including motor vehicles, passenger cars, vans, sport utility vehicles (including golf carts), buses, trucks, tractors / semitrailer tractors, on- and off-road vehicles / tippers, scooters and parts, including components and accessories for these items not belonging to other classes, Engines for land vehicles, tires for vehicle wheels, rims for vehicle wheels, complete vehicle wheels and their parts, motor vehicles for children, motorized scooters (vehicles for children) and motorized cars for children (vehicles for children)
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Vehicles, including motor vehicles, passenger cars, vans, sport utility vehicles (including golf carts), buses, trucks, tractors / semitrailer tractors, on- and off-road vehicles / tippers, scooters and parts, including components and accessories for these items not belonging to other classes, Engines for land vehicles, tires for vehicle wheels, rims for vehicle wheels, complete vehicle wheels and their parts, motor vehicles for children, motorized scooters (vehicles for children) and motorized cars for children (vehicles for children); Land vehicles, namely, motor vehicles, passenger cars, vans, sport utility vehicles, namely, golf carts, buses, trucks, tractors and semitrailer tractors, on-road and off-road vehicles and tippers, motor scooters and replacement parts in the nature of components for these items and accessories being custom vehicle grills, vehicle racks for bicycles; Engines for land vehicles, tires for vehicle wheels, rims for vehicle wheels, complete vehicle wheels and their replacement parts; motor vehicles for children, motorized scooters being vehicles for children, and motorized cars for children being vehicles for childrenClass 012 for Land vehicles, namely, motor vehicles, passenger cars, vans, sport utility vehicles, namely, golf carts, buses, trucks, tractors and semitrailer tractors, on-road and off-road vehicles and tippers, motor scooters and replacement parts in the nature of components for these items and accessories being custom vehicle grills, vehicle racks for bicycles; Engines for land vehicles, tires for vehicle wheels, rims for vehicle wheels, complete vehicle wheels and their replacement parts; motor vehicles for children, motorized scooters being vehicles for children, and motorized cars for children being vehicles for children
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Textiles and textile goods, not included in other classes, namely, textile fabrics for use in making clothing and household furnishings, textile fabrics for the manufacture of clothing, textile placements, textile napkins; bed covers and plastic table covers
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Textiles and textile goods, not included in other classes, namely, textile fabrics for use in making clothing and household furnishings, textile fabrics for the manufacture of clothing, textile placements, textile napkins; Textiles, namely, fabric, cloth, household linens, kitchen linens, bedroom linens, and textile goods, namely, textile fabrics of spandex, cotton, wool, linen for use in making clothing and household furnishings, textile fabrics of spandex, cotton, wool, linen for the manufacture of clothing, textile placements, textile napkins; bed covers and plastic table coversClass 024 for Textiles, namely, fabric, cloth, household linens, kitchen linens, bedroom linens, and textile goods, namely, textile fabrics of spandex, cotton, wool, linen for use in making clothing and household furnishings, textile fabrics of spandex, cotton, wool, linen for the manufacture of clothing, textile placements, textile napkins; bed covers and plastic table covers
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 03218/2019 filed 03/08/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Nicholas D. Wells. Nicholas D. Wells of LEGENDS LAW GROUP, PLLC, is located at

      330 MAIN ST.
      KAYSVILLE, Utah 84037
      US
The docket/reference number is 4862.28.

The phone number is 801-337-4500.

The email address is nwells@legendslaw.com

The applicants proposed attorney information: Nicholas D. Wells. Other appointed attorneys are Stephen H. Bean. Nicholas D. Wells of Legends Law Group, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      330 Main St.
      Kaysville, Utah 84037
      United States
The docket/reference number is 4862.28.

The phone number is 801-337-4500.

The email address is nwells@legendslaw.com

Nicholas D. Wells 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: NICHOLAS D. WELLS. NICHOLAS D. WELLS of LEGENDS LAW GROUP, PLLC, is located at

      330 MAIN ST.
      KAYSVILLE, Utah 84037
      US
The docket/reference number is 4862.28.

The phone number is 801-337-4500.

The email address is nwells@legendslaw.com; docket@legendslaw.com

The applicants proposed correspondence information: Nicholas D. Wells. Nicholas D. Wells of Legends Law Group, PLLC, is located at

      330 Main St.
      Kaysville, Utah 84037
      United States
The docket/reference number is 4862.28.

The phone number is 801-337-4500.

The email address is nwells@legendslaw.com; docket@legendslaw.com

SIGNATURE(S)
Response Signature
Signature: /Nicholas Wells/     Date: 09/11/2019
Signatory's Name: Nicholas D. Wells
Signatory's Position: Attorney of record, Utah Bar member

Signatory's Phone Number: 8013374500

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:    NICHOLAS D. WELLS
   LEGENDS LAW GROUP, PLLC
   
   330 MAIN ST.
   KAYSVILLE, Utah 84037
Mailing Address:    Nicholas D. Wells
   Legends Law Group, PLLC
   330 Main St.
   Kaysville, Utah 84037
        
Serial Number: 88392234
Internet Transmission Date: Wed Sep 11 10:54:08 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909111054081
54601-88392234-6100449b1e9be7e18941e1125
39927be597472864041decaa944b2d6c47c4363-
N/A-N/A-20190911105154465549