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)

---

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. 88510435 BEYOND MILK(Standard Characters, see http://uspto.report/TM/88510435/mark.png) has been amended as follows:

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

The Examining Attorney initially refused registration of the present application based upon a likelihood of confusion with U.S. Registration No. 4814872 for the mark BEYOND MILK in the name of John R. Schindler, d/b/a Omega Creamery LLC. The cited registration was cancelled under Section 18 by the Trademark Trial and Appeal Board on November 15, 2019. Accordingly, this registration should no longer be cited as a bar to registration of the present mark, and it is respectfully requested that the refusal to register under Trademark Act Section 2(d) be withdrawn, the below amendments entered into the record, and the application passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 030 for Confectionery, namely, candy; confectionery, namely, chocolate; dairy-free chocolate; chocolate-flavored confectionery; imitation chocolate-flavored confectionery; chocolate substitutes; chocolate based products; dairy-free chocolate based products; cocoa based products ; dairy-free cocoa based products; cocoa based confectionery products; dairy-free cocoa based confectionery products; chocolate couverture; candy with cocoa; cocoa products; foods with a cocoa base
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: Confectionery, namely, candy; confectionery, namely, chocolate; dairy-free chocolate; chocolate-flavored confectionery; chocolate-flavored confectionery, namely, vegan chocolate substitute candy bars; imitation chocolate-flavored confectionery; non-dairy chocolate flavoured candy bars; chocolate substitutes; cacao-flavoured chocolate bars; chocolate based products; cacao-based candy bars; dairy-free chocolate based products; cacao-based fondant bars; cocoa based products; cacao-flavoured fondant bars; dairy-free cocoa based products; imitation chocolate-flavored confectionery, namely, vegan chocolate substitute candy bars; cocoa based confectionery products; non-dairy chocolate flavoured candy bars; dairy-free cocoa based confectionery products; cacao-flavoured chocolate bars; cacao-based candy bars; cacao-based fondant bars; cocoa products; cacao-flavoured fondant bars; foods with a cocoa base; chocolate based products, namely, chocolate based snack foods and chocolate based candy bars; dairy-free chocolate based products, namely, dairy-free chocolate flavored snack foods, and dairy-free chocolate based candy bars; cocoa based products, namely, cocoa-based snack foods and cocoa-based candy bars; dairy-free cocoa based products, namely, dairy-free cocoa-based snack foods and dairy-free cocoa-based candy bars; cocoa based confectionery products, namely candy and chocolate; dairy-free cocoa based confectionery products, namely, candy, chocolate and dairy-free cocoa based confectionary bars featuring hazelnut; chocolate couverture; candy with cocoa; cocoa products, namely, cocoa snack foods and candy bars; foods with a cocoa base, namely, snack foods and candy barsClass 030 for Confectionery, namely, candy; confectionery, namely, chocolate; dairy-free chocolate; chocolate-flavored confectionery, namely, vegan chocolate substitute candy bars; non-dairy chocolate flavoured candy bars; cacao-flavoured chocolate bars; cacao-based candy bars; cacao-based fondant bars; cacao-flavoured fondant bars; imitation chocolate-flavored confectionery, namely, vegan chocolate substitute candy bars; non-dairy chocolate flavoured candy bars; cacao-flavoured chocolate bars; cacao-based candy bars; cacao-based fondant bars; cacao-flavoured fondant bars; chocolate based products, namely, chocolate based snack foods and chocolate based candy bars; dairy-free chocolate based products, namely, dairy-free chocolate flavored snack foods, and dairy-free chocolate based candy bars; cocoa based products, namely, cocoa-based snack foods and cocoa-based candy bars; dairy-free cocoa based products, namely, dairy-free cocoa-based snack foods and dairy-free cocoa-based candy bars; cocoa based confectionery products, namely candy and chocolate; dairy-free cocoa based confectionery products, namely, candy, chocolate and dairy-free cocoa based confectionary bars featuring hazelnut; chocolate couverture; candy with cocoa; cocoa products, namely, cocoa snack foods and candy bars; foods with a cocoa base, namely, snack foods and candy bars
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Katjes Fassin GmbH + Co. KG a(n) kommanditgesellschaft (kg), legally organized under the laws of Germany, having an address of
      Dechant-Sprünken-Str. 53-57
      Emmerich, 46446
      Germany

Proposed: Katjes Fassin GmbH + Co. KG, kommanditgesellschaft (kg) legally organized under the laws of Germany, having an address of
      Dechant-Sprünken-Str. 53-57
      Emmerich, 46446
      Germany
      Email Address: info@katjes.de

The owner's/holder's current attorney information: Julia Anne Matheson. Julia Anne Matheson of HOGAN LOVELLS US LLP, is located at

      555 13TH STREET, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 757497.0002.
      The phone number is 202-637-5600.
      The fax number is 202-637-5910.
      The email address is DCPTOTrademarkmail@hoganlovells.com

The owner's/holder's proposed attorney information: Julia Anne Matheson. Other appointed attorneys are Anna Kurian Shaw, Katherine Bastian, Lauren Cury and Lauren Chamblee. Julia Anne Matheson of Hogan Lovells US 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

      555 13th Street, NW
      Washington, District of Columbia 20004
      United States
The docket/reference number is 757497.0002.
      The phone number is 202-637-5600.
      The fax number is 202-637-5910.
      The email address is DCPTOTrademarkmail@hoganlovells.com

Julia Anne Matheson 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.Correspondence Information (current):
      JULIA ANNE MATHESON
      PRIMARY EMAIL FOR CORRESPONDENCE: DCPTOTrademarkmail@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): HLDCTMGroup@hoganlovells.com; dctrademark@hoganlovells.com; dctmfiling@hoganlovells.com

The docket/reference number is 757497.0002.
Correspondence Information (proposed):
      Julia Anne Matheson
      PRIMARY EMAIL FOR CORRESPONDENCE: DCPTOTrademarkmail@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): HLDCTMGroup@hoganlovells.com; dctrademark@hoganlovells.com; dctmfiling@hoganlovells.com; julia.matheson@hoganlovells.com

The docket/reference number is 757497.0002.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MILK apart from the mark as shown.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_672116730-161101919_._BEYOND_MILK_ROA_Signature_Page.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Dr. Ulf Dörner
Signatory's Position: In-House Counsel
Signatory's Phone Number: 2026375600


Response Signature
Signature: /Julia Anne Matheson/     Date: 02/28/2020
Signatory's Name: Julia Anne Matheson
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202-637-5600

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:    JULIA ANNE MATHESON
   HOGAN LOVELLS US LLP
   
   555 13TH STREET, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Julia Anne Matheson
   Hogan Lovells US LLP
   555 13th Street, NW
   Washington, District of Columbia 20004
        
Serial Number: 88510435
Internet Transmission Date: Fri Feb 28 16:45:51 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200228164551880
278-88510435-710ed6231b083af3a5ab224c690
d533312df74c8cac516926abcc8491be58dbfbb1
-N/A-N/A-20200228161101919859