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. 88441355 PARTY VERA WANG(Standard Characters, see http://uspto.report/TM/88441355/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 033 for Wine; sparkling wine; distilled spirits; champagne; liqueur
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: Wine; sparkling wine; distilled spirits; champagne; liqueur; alcoholic carbonated beverages, except beer; juice beverages being alcoholic fruit beveragesClass 033 for Wine; sparkling wine; distilled spirits; champagne; liqueur; alcoholic carbonated beverages, except beer; juice beverages being alcoholic fruit beverages
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: Beth M. Goldman. Beth M. Goldman of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      2050 MAIN STREET, SUITE 1100
      IRVINE, California 92614-8255
      US
The docket/reference number is 21534.

The phone number is 415-773-5700.

The fax number is 415-773-5759.

The email address is ipprosecutionsf@orrick.com

The applicants proposed attorney information: Beth M. Goldman. Other appointed attorneys are Betsy Wang Lee, Eileen Z. Aghnami, Chris Civil, Thomas H. Zellerbach, Kristin S. Cornuelle, Diana M. Rutowski, Peter D. Vogl, Briggs M. Wright, Robert M. O'Connell Jr.. Beth M. Goldman of ORRICK, HERRINGTON & SUTCLIFFE 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

      IP Prosecution Department
      2050 MAIN STREET, SUITE 1100
      IRVINE, California 92614-8255
      United States
The docket/reference number is 21534.

The phone number is 415-773-5700.

The fax number is 415-773-5759.

The email address is ipprosecutionsf@orrick.com

Beth M. Goldman 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: BETH M. GOLDMAN. BETH M. GOLDMAN of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      2050 MAIN STREET, SUITE 1100
      IRVINE, California 92614-8255
      US
The docket/reference number is 21534.

The phone number is 415-773-5700.

The fax number is 415-773-5759.

The email address is ipprosecutionsf@orrick.com; beth.goldman@orrick.com; blee@orrick.com; eaghnami@orrick.com; carrierose@orrick.com

The applicants proposed correspondence information: Beth M. Goldman. Beth M. Goldman of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      IP Prosecution Department
      2050 MAIN STREET, SUITE 1100
      IRVINE, California 92614-8255
      United States
The docket/reference number is 21534.

The phone number is 415-773-5700.

The fax number is 415-773-5759.

The email address is ipprosecutionsf@orrick.com; beth.goldman@orrick.com; blee@orrick.com; eaghnami@orrick.com; ccivil@orrick.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 1797058, 2495866, 3599755, and others.


Miscellaneous Statement
Applicant responds to the Office Action issued on July 19, 2019 as follows: Applicant submits that consent from the living individual identified in the mark, "VERA WANG" is of record based on Applicant's prior registrations, as provided in U.S. Reg. Nos. 1797058, 2495866, 3411896, 3599755, and others, all of which Applicant claims ownership of. TMEP Section 813.01(a), 1206.04(b); see 37 C.F.R. Section 2.61(b). Per TMEP Section 1206.04(b), a new consent is not required if consent is of record in a valid registration owned by Applicant. Applicant respectfully requests that the Examining Attorney update the record to include the following statement: The name(s), portrait(s), and/or signature(s) shown in the mark identifies "VERA WANG", whose consent(s) to register is made of record. Applicant seeks to amend the identification of goods to move certain goods from the pending companion application at App. Serial No. 88441353 in Class 32 to the current application in Class 33 at App. Serial No. 88441355. Because Applicant has a pending companion application for the same mark in Class 32, Applicant seeks to move the amended goods "alcoholic carbonated beverages, except beer; juice beverages being alcoholic fruit beverages" from that pending companion application in Class 32 to this current companion Class 33 application, pursuant to TMEP Section 1402.08 and the Examining Attorney's requirement that certain goods in the companion application in Class 32 be reclassified in Class 33. The companion applications were filed on the same day, neither application has been published, and both applications were filed under Section 1. A separate amendment is being concurrently filed under the companion application at App. Serial No. 88441353 as well, pursuant to TMEP Section 1402.08.


SIGNATURE(S)
Response Signature
Signature: /Eileen Z. Aghnami/     Date: 10/03/2019
Signatory's Name: Eileen Z. Aghnami
Signatory's Position: Associate Attorney, Orrick, Herrington & Sutcliffe LLP, CA Bar Member

Signatory's Phone Number: 213-612-2370

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:    BETH M. GOLDMAN
   ORRICK, HERRINGTON & SUTCLIFFE LLP
   
   2050 MAIN STREET, SUITE 1100
   IRVINE, California 92614-8255
Mailing Address:    Beth M. Goldman
   ORRICK, HERRINGTON & SUTCLIFFE LLP
   IP Prosecution Department
   2050 MAIN STREET, SUITE 1100
   IRVINE, California 92614-8255
        
Serial Number: 88441355
Internet Transmission Date: Fri Oct 04 00:25:25 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.X-2019100400252599114
7-88441355-6108925f016cda9f06f3bf5baf328
964c093ecbd38078d7743f217ed356b78-N/A-N/
A-20191004002011346389