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. 88463860 SHAKER(Standard Characters, see http://uspto.report/TM/88463860/mark.png) has been amended as follows:

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

The Examining Attorney has requested information regarding the term SHAKER. 1. Applicant's do not shake in any way. Nevertheless, it is important to note that the water filtration process (as with most things and processes) requires some movement. In water filtration, water (and any substances contained therein, such as minerals, nitrates and emerging contaminants) flows through the goods, the filtration media vibrates at some level in response to the water flow and as a result of impeding the flow of the dissolved solids or contaminants actually filtered out by the filter. 2. Applicant does not believe Shaker is the surname, nickname or stage name of any person associated with applicant, living or dead. Nevertheless, Applicant, its predecessors and its parent corporation Cott Corporation, have been in business over 100 years and are large business enterprises. It is always possible that of the thousands of persons who have been employed by or otherwise associated with Applicant, someone associated with Applicant had or has the surname or nickname of Shaker. 3. Shaker is not a reference to a geographical location. 4. Shaker is not a reference to a particular architectural style or field of design aesthetics. The Examining Attorney has also requested additional information regarding Applicant's filtration services. Applicant has attached marketing materials identifying how home and office water filtration services are provided and to whom. Applicant is available to provide additional information upon request.

EVIDENCE
Evidence in the nature of Marketing materials describing the filtration services offered to homes and offices. has been attached. Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Water treatment equipment, namely, water filtration units and reverse osmosis units
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: Class 011 for Water treatment equipment, namely, water filtration units and reverse osmosis units
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 040 for Rental of water filtration units for commercial use, namely, for office and residential use
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: Class 040 for Rental of water filtration units for commercial use, namely, for office and residential use
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 043 for Rental of drinking water equipment for office and residential use;, namely, rental of drinking water dispensers
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: Rental of drinking water equipment for office and residential use; Rental of drinking water equipment for office and residential use, namely, rental of drinking water dispensers; , namely, rental of drinking water dispensersClass 043 for Rental of drinking water equipment for office and residential use, namely, rental of drinking water dispensers
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: Bart A. Lazar. Bart A. Lazar of SEYFARTH SHAW LLP, is located at

      SUITE 8000
      233 S. WACKER DRIVE
      CHICAGO, Illinois 60606
      US

The phone number is 312-460-5986.

The applicants proposed attorney information: Bart A. Lazar. Bart A. Lazar of SEYFARTH SHAW LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 8000
      233 S. WACKER DRIVE
      CHICAGO, Illinois 60606
      United States

The phone number is 312-460-5986.

The email address is blazar@seyfarth.com

Bart A. Lazar 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: BART A. LAZAR. BART A. LAZAR of SEYFARTH SHAW LLP, is located at

      SUITE 8000
      233 S. WACKER DRIVE
      CHICAGO, Illinois 60606
      US

The phone number is 312-460-5986.

The email address is blazar@seyfarth.com; chiipdocket@seyfarth.com

The applicants proposed correspondence information: Bart A. Lazar. Bart A. Lazar of SEYFARTH SHAW LLP, is located at

      SUITE 8000
      233 S. WACKER DRIVE
      CHICAGO, Illinois 60606
      United States

The phone number is 312-460-5986.

The email address is blazar@seyfarth.com; chiipdocket@seyfarth.com

SIGNATURE(S)
Response Signature
Signature: /Bart A. Lazar/     Date: 01/09/2020
Signatory's Name: Bart A. Lazar
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 3124605986

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:    BART A. LAZAR
   SEYFARTH SHAW LLP
   SUITE 8000
   233 S. WACKER DRIVE
   CHICAGO, Illinois 60606
Mailing Address:    Bart A. Lazar
   SEYFARTH SHAW LLP
   SUITE 8000
   233 S. WACKER DRIVE
   CHICAGO, Illinois 60606
        
Serial Number: 88463860
Internet Transmission Date: Thu Jan 09 15:31:51 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20200109153151293
116-88463860-700bffe3ac61cafa8bf4e49a585
e6c1bb0f6d4f54a8616d63a0fbe437edd8-N/A-N
/A-20200109151501031943