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. 88517589 WINLEVI (Stylized and/or with Design, see http://uspto.report/TM/88517589/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Non-medicated cosmetics for the care and treatment of the skin; cosmetics; non-medicated dermatological creams; non-medicated creams for skin care; non-medicated dermo-cosmetics for the preservation of the beauty and health of the body; non-medicated cosmetics for skin with acne; skin cleansers; detergent soap
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018095385 filed 07/16/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Non-medicated cosmetics for the care and treatment of the skin; cosmetics; non-medicated dermatological creams; non-medicated dermatological creams, namely, non-medicated skin creams; non-medicated creams for skin care; non-medicated dermo-cosmetics for the preservation of the beauty and health of the body; non-medicated cosmetics for skin with acne; skin cleansers; detergent soapClass 003 for Non-medicated cosmetics for the care and treatment of the skin; cosmetics; non-medicated dermatological creams, namely, non-medicated skin creams; non-medicated creams for skin care; non-medicated dermo-cosmetics for the preservation of the beauty and health of the body; non-medicated cosmetics for skin with acne; skin cleansers; detergent soap
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018095385 filed 07/16/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018095385 registered 11/19/2019 with a renewal date of __________ and an expiration date of 07/16/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-38122245210-152430626_._2048-TM-156_European_Registration.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dermatological pharmaceutical preparations for acne, alopecia, warts; pharmaceutical preparations for the care and treatment of the skin; pharmaceutical preparations, namely, creams for acne; medicinal creams for the care and treatment of the skin; pharmaceutical preparations in the form of antiseptics for the treatment of cuts; pharmaceutical preparations for the topical treatment of acne; all-purpose disinfectants; bandages for dressings and skin wounds; gauzes; and medical plasters; pharmaceutical preparations for wounds; pharmaceutical preparations having tissue regenerative properties; food supplements; vitamin supplements; nutritional supplements; dietary supplements
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018095385 filed 07/16/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Dermatological pharmaceutical preparations for acne, alopecia, warts; pharmaceutical preparations for the care and treatment of the skin; pharmaceutical preparations, namely, creams for acne; medicinal creams for the care and treatment of the skin; pharmaceutical preparations in the form of antiseptics for the treatment of cuts; pharmaceutical preparations for the topical treatment of acne; all-purpose disinfectants; bandages for dressings and skin wounds; gauzes; and medical plasters; pharmaceutical preparations for wounds; pharmaceutical preparations having tissue regenerative properties; pharmaceutical preparations for use in dermatology having tissue regenerative properties; food supplements; vitamin supplements; nutritional supplements; dietary supplementsClass 005 for Dermatological pharmaceutical preparations for acne, alopecia, warts; pharmaceutical preparations for the care and treatment of the skin; pharmaceutical preparations, namely, creams for acne; medicinal creams for the care and treatment of the skin; pharmaceutical preparations in the form of antiseptics for the treatment of cuts; pharmaceutical preparations for the topical treatment of acne; all-purpose disinfectants; bandages for dressings and skin wounds; gauzes; and medical plasters; pharmaceutical preparations for wounds; pharmaceutical preparations for use in dermatology having tissue regenerative properties; food supplements; vitamin supplements; nutritional supplements; dietary supplements
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018095385 filed 07/16/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018095385 registered 11/19/2019 with a renewal date of __________ and an expiration date of 07/16/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-38122245210-152430626_._2048-TM-156_European_Registration.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The applicant's current attorney information: Kenneth F. Florek. Kenneth F. Florek of FLOREK & ENDRES PLLC, is located at

      1156 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      US
The docket/reference number is 2048-TM-156.

The phone number is 212-997-1000.

The fax number is 212-997-1060.

The email address is docket@feiplaw.com

The applicants proposed attorney information: Kenneth F. Florek. Kenneth F. Florek of FLOREK & ENDRES PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1156 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      United States
The docket/reference number is 2048-TM-156.

The phone number is 212-997-1000.

The fax number is 212-997-1060.

The email address is docket@feiplaw.com

Kenneth F. Florek 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 F. FLOREK. KENNETH F. FLOREK of FLOREK & ENDRES PLLC, is located at

      1156 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      US
The docket/reference number is 2048-TM-156.

The phone number is 212-997-1000.

The fax number is 212-997-1060.

The email address is docket@feiplaw.com; kflorek@feiplaw.com

The applicants proposed correspondence information: Kenneth F. Florek. Kenneth F. Florek of FLOREK & ENDRES PLLC, is located at

      1156 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      United States
The docket/reference number is 2048-TM-156.

The phone number is 212-997-1000.

The fax number is 212-997-1060.

The email address is docket@feiplaw.com; kflorek@feiplaw.com

ADDITIONAL STATEMENTS
Color Claim
The color(s) blue and teal is/are claimed as a feature of the mark.

Description of mark
The mark consists of the literal element "WINLEVI" in blue with a design to the upper right of the wording consisting of a single line circle in teal with shaded circles in blue and teal extending from the bottom left of the first circle.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /kenneth f. florek/     Date: 01/23/2020
Signatory's Name: Kenneth F. Florek
Signatory's Position: Attorney of record, New York Bar Member

Signatory's Phone Number: 212-997-1000

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 F. FLOREK
   FLOREK & ENDRES PLLC
   
   1156 AVENUE OF THE AMERICAS
   NEW YORK, New York 10036
Mailing Address:    Kenneth F. Florek
   FLOREK & ENDRES PLLC
   1156 AVENUE OF THE AMERICAS
   NEW YORK, New York 10036
        
Serial Number: 88517589
Internet Transmission Date: Thu Jan 23 15:42:54 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001231542545
83034-88517589-7004499949c5a27885ecb596c
e9a1ed829c411b52c6dff09a5bd243e636416e7e
55-N/A-N/A-20200123152430626419