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. 88474586 SYSTIVA (Stylized and/or with Design, see http://uspto.report/TM/88474586/mark.png) has been amended as follows:

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

In the Office Action dated July 15, 2019, the Examining Attorney requested amendment to some of the Class 1 goods in the application. The Class 1 goods, as filed, read: Chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, genes of seeds for agricultural production. In response to the Office Action, Applicant has amended some of the goods set forth in Class 1, including amending 'especially' to 'namely' and 'genes of seeds for agricultural production' to 'biotechnologically-formed genes for use in the manufacture of agricultural seeds'. With respect to the other wording in Class 1 for which the Examining Attorney has requested amendment, Applicant respectfully submits that the identical or nearly identical wording as that set forth in this application routinely has been accepted by the U.S. Trademark Office. A sampling of some such registrations and allowed applications, some of which are very recent, include VIZURA (Reg. No. 5,688,416), CRELYON (Reg. No. 5,230,026), CEVYA (Reg. No. 5,184,077), ADURETY (Reg. No. 5,184,074), BELANTY (Reg. No. 5,184,065), LEGRIUM (App. No. 88/252,775), PROVYSOL (App. No. 87/926,418), VYTELOX (App. No. 87/919,738), VELTYMA (App. No. 87/919,686), REVYTEK (App. No. 87/883,759), REVY (App. No. 87/863,470), DUOGUARD (App. No. 87/804,471), COMBISURE (App. No. 87/802,712), CAREGUARD (App. No. 87/799,852), HIDEXOR (App. No. 87/729,620), ROBUXOR (App. No. 87/727,288), TIREXOR (App. No. 87/727,215), ZERZIO (App. No. 87/707,735), VERCORAS (App. No. 87/707,718), RENESTRA (App. No. 87/456,896), and VITELYUM (App. No. 87/079,746) to name just some. Status printouts from the TSDR database of these registrations and applications are attached hereto as Exhibits 1 through 21, respectively. Applicant is mindful of the Trademark Office?s oft-cited admonition that decisions of other Examining Attorneys are not binding. Nevertheless, as part of the Trademark Office?s 21st Century Strategic Plan, the Trademark Office has undertaken an effort to provide better quality of examination through better consistency of examination. See United States Trademark Office ? 2007 to 2012 Strategic Plan, http://www.gov.uspto.report/web/offices/com/strat2007/stratplan2007-2012.pdf. The consistency initiative has now become permanent. Applicant submits that the above-mentioned registrations and allowed applications are recent and the various different examiners all accepted this wording. Furthermore, Applicant submits that there is a presumption that the classification and identification of goods in such registrations and applications are acceptable unless such classification or identification is clearly wrong, which is not the case here. Applicant also has responded to the remaining issues in the Office Action. In view of the amendments and submissions, Applicant submits that its application is in order for favorable action and respectfully requests that this application proceed to publication.

EVIDENCE
Evidence in the nature of TSDR printouts has been attached.
Original PDF file:
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, genes of seeds for agricultural production
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: Chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations; Chemicals used in agriculture, horticulture and forestry, namely, plant fortifying preparations; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, genes of seeds for agricultural production; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, biotechnologically-formed genes for use in the manufacture of agricultural seedsClass 001 for Chemicals used in agriculture, horticulture and forestry, namely, plant fortifying preparations; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, biotechnologically-formed genes for use in the manufacture of agricultural seeds
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: Joyce M. Ferraro. Joyce M. Ferraro of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      151 WEST 42ND STREET, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is BASF 1908310.

The phone number is 212-813-5900.

The fax number is (212) 813-5901.

The email address is ferraro-docket@fzlz.com

The applicants proposed attorney information: Joyce M. Ferraro. Joyce M. Ferraro of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      151 WEST 42ND STREET, 17TH FLOOR
      NEW YORK, New York 10036
      United States
The docket/reference number is BASF 1908310.

The phone number is 212-813-5900.

The email address is ferraro-docket@fzlz.com

Joyce M. Ferraro 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: JOYCE M. FERRARO. JOYCE M. FERRARO of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      151 WEST 42ND STREET, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is BASF 1908310.

The phone number is 212-813-5900.

The fax number is (212) 813-5901.

The email address is ferraro-docket@fzlz.com

The applicants proposed correspondence information: Joyce M. Ferraro. Joyce M. Ferraro of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      151 WEST 42ND STREET, 17TH FLOOR
      NEW YORK, New York 10036
      United States
The docket/reference number is BASF 1908310.

The phone number is 212-813-5900.

The email address is ferraro-docket@fzlz.com

ADDITIONAL STATEMENTS
Translation
The wording SYSTIVA has no meaning in a foreign language.


Miscellaneous Statement
To the best of Applicant's knowledge, SYSTIVA has not been and will not be used as a varietal or cultivar name or in connection with a plant patent, utility patent, or certificate for plant-variety protection


SIGNATURE(S)
Response Signature
Signature: /jmf/     Date: 01/15/2020
Signatory's Name: Joyce M. Ferraro
Signatory's Position: Attorney of Record, New York state bar member

Signatory's Phone Number: 212-813-5900

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:    JOYCE M. FERRARO
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Joyce M. Ferraro
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 88474586
Internet Transmission Date: Wed Jan 15 16:32:14 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200115163214957
616-88474586-70018b371c0927be9e2c4ecfc94
4fc2951c44c1ef2ad41ac7e55ac53b826cf855-N
/A-N/A-20200115160820172756