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. 88511545  (Stylized and/or with Design, see http://uspto.report/TM/88511545/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: (Stylized and/or with Design, see http://uspto.report/TM/88511545/mark.png)
Proposed: (Stylized and/or with Design, see mark)
The color(s) turquoise (Pantone 326) is/are claimed as a feature of the mark.
The mark consists of The mark consists of the color turquoise (Pantone 326) as used on the storefront of the retail establishment in the rendering of the retail store services; the color is applied to a three-dimensional rectangle above the windows and entrance of the building; the dotted lines show placement of the mark on the storefront and are not claimed as a feature of the mark.

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

Please see argument in evidence section attached.

EVIDENCE
Evidence in the nature of Argument. has been attached.
Original PDF file:
evi_10777227216-20200304180301091992_._Color_-Retail_Store_Services_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 91 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for retail store services
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 08/31/2008 and first used in commerce at least as early as 11/23/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: retail store services; Retail store services featuring teas and tea-related productsClass 035 for Retail store services featuring teas and tea-related products
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 08/31/2008 and first used in commerce at least as early as 11/23/2011 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: DAVIDsTEA INC., a corporation of Canada, having an address of
      5430 Ferrier
      Mont-Royal, Quebec, H4P1M2
      Canada
      Email Address: peter.riebling@rieblinglaw.com
      +1-
Proposed: DAVIDsTEA INC., a corporation of Canada, having an address of
      5430 Ferrier
      Mont-Royal, Quebec, H4P1M2
      Canada
      Email Address: jpmikus@fasken.com
      +1-

The owner's/holder's current attorney information: Peter J. Riebling. Peter J. Riebling of RIEBLING IP, PLLC, is located at

      SUITE 1025
      1717 PENNSYLVANIA AVENUE, N.W.
      WASHINGTON, District of Columbia 20006-3951
      United States
The docket/reference number is 320520-00013.
      The phone number is 202-631-2021.
      The fax number is 2025599163.
      The email address is peter.riebling@rieblinglaw.com

The owner's/holder's proposed attorney information: Peter J. Riebling. Other appointed attorneys are Jutta M. Frankfurter. Peter J. Riebling of RIEBLING IP, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 1025
      1717 PENNSYLVANIA AVENUE, N.W.
      WASHINGTON, District of Columbia 20006-3951
      United States
The docket/reference number is 320520-00013.
      The phone number is 202-631-2021.
      The fax number is 2025599163.
      The email address is peter.riebling@rieblinglaw.com

Peter J. Riebling 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):
      PETER J. RIEBLING
      PRIMARY EMAIL FOR CORRESPONDENCE: peter.riebling@rieblinglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@rieblinglaw.com; valerie.purdy-pyeron@rieblinglaw.com; File.Room@rieblinglaw.comom

The docket/reference number is 320520-00013.
Correspondence Information (proposed):
      Peter J. Riebling
      PRIMARY EMAIL FOR CORRESPONDENCE: peter.riebling@rieblinglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@rieblinglaw.com; valerie.purdy-pyeron@rieblinglaw.com

The docket/reference number is 320520-00013.

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
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5156327.


SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.

Original PDF file:
e2f-26003878759-180301091_._Color_-Retail_Store_Services_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 91 pages)
2(f) evidence-1
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SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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: /peter j. riebling/      Date: 03/04/2020
Signatory's Name: PETER J. RIEBLING
Signatory's Position: Attorney of Record, member of District of Colombia Bar
Signatory's Phone Number: 2026312021


Response Signature
Signature: /peter j. riebling/     Date: 03/04/2020
Signatory's Name: PETER J. RIEBLING
Signatory's Position: Attorney of Record, Member of District of Columbia Bar

Signatory's Phone Number: 2026312021

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:    PETER J. RIEBLING
   RIEBLING IP, PLLC
   SUITE 1025
   1717 PENNSYLVANIA AVENUE, N.W.
   WASHINGTON, District of Columbia 20006-3951
Mailing Address:    Peter J. Riebling
   RIEBLING IP, PLLC
   SUITE 1025
   1717 PENNSYLVANIA AVENUE, N.W.
   WASHINGTON, District of Columbia 20006-3951
        
Serial Number: 88511545
Internet Transmission Date: Wed Mar 04 18:20:15 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:X:X::XX-2020030418201
5516173-88511545-710c6407cab6cdda716414b
4147f3e79dae868b584d2be642ae38ed779d3a35
b5f1-N/A-N/A-20200304180301091992