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. 88452400 OASIS(Standard Characters, see http://uspto.report/TM/88452400/mark.png) has been amended as follows:

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

Applicant appreciates the Examining Attorney's efforts in examining the trademark application for OASIS. In response to the office action, Applicant respectfully amends the basis to intent-to-use to address the specimen refusal. Furthermore, the Examining Attorney wanted Applicant to answer the following questions. Question: Whether OASIS has ever been used or will be used as a varietal or cultivar name. Answer: No. To Applicant's knowledge, OASIS has not been used by Applicant or anyone else as a varietal or cultivar name. Evidence of this indicates the fact that third parties use variants of OASIS as their trademarks for grass seed. An example is DESERT OASIS, Reg. No. 4,983,502. In this application, the trademark owner did NOT have to disclaim OASIS. As such, for consistency, Applicant would not and should not need to disclaim OASIS, thus rendering and/or indicating that OASIS is inherently distinctive and capable of serving as a trademark, and thus the Examining Attorney's rejection on the basis that OASIS is a varietal name is misplaced (and runs counter to existing Trademark Office practice and precedent of, inter alia, allowing DESERT OASIS.) It also would be tantamount to sending the public inconsistent pronouncements, which undermines the credibility of the Trademark Office, an office which the undersigned attorney holds in the highest esteem. Question: Whether OASIS has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant variety protection. Answer: No. Applicant never has nor will it ever use OASIS in connection with a plant patent, utility patent, or certificate for plant variety protection. To Applicant's knowledge, no third party has done so either. The Examining Attorney also rejected the application pursuant to Section 2(d) in light of the above-referenced DESERT OASIS mark. Applicant respectfully disagrees and contends that the overall commercial impression between the two is highly dissimilar. The fact that the cited mark starts with a completely different word, viz., DESERT, wholly different in aural and visual aspects from anything in Applicant's OASIS mark, is highly relevant and militates against a finding of likelihood of confusion. ?[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered,? Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), that general principle applies where the first part of the mark is a strong distinctive term. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see In re Minibar North America, Inc., Ser. No. 87130884, at 8 (T.T.A.B. Oct. 15, 2019) (finding no likelihood of confusion between MINIBAR SMARTSNAX and SMART SNACKS). Here, with DESERT, the first part of the cited mark, not descriptive, then this principle has extra weight. See, e.g., In re Leachco, Inc., Ser. No. 86791850, at 4 (T.T.A.B. July 27, 2017) (First, Registrant?s mark begins with the separate and additional term CUTIE. As we often have said, the lead element in a mark has a position of prominence; it is likely to be noticed by consumers and so to play a dominant role in the mark. See, e.g., Palm Bay, 73 USPQ2d at 1692 (stating that VEUVE is a prominent part of the mark VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that consumers will first notice the identical lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that ?it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered?).). Therefore, Applicant submits that the marks are so different in overall commercial impression, due to the vast aural and visual difference imparted by the preceding non-descriptive DESERT in the cited mark, that no likelihood of confusion can arise and the Section 2(d) refusal should be lifted.

EVIDENCE
Evidence in the nature of answers to questions posed by Examining Attorney and response to the Section 2(d) rejection. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Grass seed
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 06/30/1999 and first used in commerce at least as early as 06/30/1999 , and is now in use in such commerce.

Proposed: Class 031 for Grass seed
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.

The applicant's current attorney information: Kenneth Motolenich-Salas. Kenneth Motolenich-Salas of MOTOSALAS LAW, PLLC, is located at

      16210 NORTH 63RD STREET
      SCOTTSDALE, Arizona 85254
      US

The phone number is 202-257-3720.

The email address is ken@motosalaslaw.com

The applicants proposed attorney information: Kenneth Motolenich-Salas. Kenneth Motolenich-Salas of MOTOSALAS LAW, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      16210 NORTH 63RD STREET
      SCOTTSDALE, Arizona 85254
      United States

The phone number is 202-257-3720.

The email address is ken@motosalaslaw.com

Kenneth Motolenich-Salas 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: KENNETH MOTOLENICH-SALAS. KENNETH MOTOLENICH-SALAS of MOTOSALAS LAW, PLLC, is located at

      16210 NORTH 63RD STREET
      SCOTTSDALE, Arizona 85254
      US

The phone number is 202-257-3720.

The email address is ken@motosalaslaw.com; kmotolen@yahoo.com

The applicants proposed correspondence information: Kenneth Motolenich-Salas. Kenneth Motolenich-Salas of MOTOSALAS LAW, PLLC, is located at

      16210 NORTH 63RD STREET
      SCOTTSDALE, Arizona 85254
      United States

The phone number is 202-257-3720.

The email address is ken@motosalaslaw.com; kmotolen@yahoo.com

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: /Kenneth Michael Motolenich-Salas/      Date: 01/16/2020
Signatory's Name: Kenneth Michael Motolenich-Salas
Signatory's Position: Attorney of Record (AZ Bar Member)
Signatory's Phone Number: 2022573720


Response Signature
Signature: /Kenneth Michael Motolenich-Salas/     Date: 01/16/2020
Signatory's Name: Kenneth Michael Motolenich-Salas
Signatory's Position: Attorney of Record (AZ Bar Member)

Signatory's Phone Number: 2022573720

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:    KENNETH MOTOLENICH-SALAS
   MOTOSALAS LAW, PLLC
   
   16210 NORTH 63RD STREET
   SCOTTSDALE, Arizona 85254
Mailing Address:    Kenneth Motolenich-Salas
   MOTOSALAS LAW, PLLC
   16210 NORTH 63RD STREET
   SCOTTSDALE, Arizona 85254
        
Serial Number: 88452400
Internet Transmission Date: Thu Jan 16 15:18:42 EST 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXX:XXX:XXXX:XXXX:XX
XX:XXXX-20200116151842749309-88452400-70
0884b8faf1bea383e65d4dcef735dd48dd11962a
e0edeeda144dd98e96177c79-N/A-N/A-2020011
6144239302259