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. 88527514 PROFLORA(Standard Characters, see http://uspto.report/TM/88527514/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of The examiner refused registration of the application filed by Natural Pack, Inc. ("NPI") for the mark PROFLORA based on the likelihood of confusion with a prior application for the mark FLORAPRO, SN 87,607,942, filed by HGCI, Inc. Background: On 10/20/2017, the examiner assigned to SN '942 refused registration based on the likelihood of confusion with Applicant's THEN existing registration for PROFLORA, RN 4,204,425. HGCI petitioned to cancel NPI's RN '425 and the parties resolved the matter by consent. On 9/5/2018 a joint motion to amend was filed by the parties involved in Cancellation No. 92066860. A copy is attached. On 3/5/2019 the TTAB issued a cancellation of the proceeding based on NPI's consent and removal, in the 9/5/2018 joint motion, of the class 1 goods from NPI's registration '425. During the time that the parties were seeking to resolve the issues involved in the cancellation, NPI's registration inadvertently lapsed. Therefore, NPI filed a new application claiming class 21 and 31 goods, BUT NOT class 1 goods. Since NPI and HGCI agreed, along with the examiner, that there was little if any likelihood of confusion between the marks PROFLORA and FLORAPRO given the amended description of goods, Applicant NPI asserts no such confusion is likely now. In addition, in accordance with the Examiner's instructions, Applicant is submitting a substitute specimen for Class 21 goods and is amending the identification of Class 31 goods. NPI respectfully requests that the examiner carefully review the prosecution history and remove the refusal to register. has been attached.
Original PDF file:
evi_7511178135-20200309140943535968_._Settlement_Agmt_92066860.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 021 for florist and garden supplies, namely, decorative pots, plant baskets, and plant basket liners
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 12/27/2009 and first used in commerce at least as early as 12/27/2009 , and is now in use in such commerce.

Proposed: Class 021 for florist and garden supplies, namely, decorative pots, plant baskets, and plant basket liners
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 12/27/2009 and first used in commerce at least as early as 12/27/2009 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 021. The specimen(s) submitted consists of photograph of the goods showing a tag with the mark.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-7511178135-20200309140943535968_._SUB_SPECIMEN_PROFLORA_CLASS_21.jpeg.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

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 [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:
Current: Class 031 for Mulch; coconut husk, coir and bark for use as mulch; peat moss; living lichen; mosses, namely, natural decorative mosses sold dried, dyed and preserved for use with floral arrangements, arts, crafts, and hobby
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 12/27/2009 and first used in commerce at least as early as 12/27/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Mulch; coconut husk, coir and bark for use as mulch; dried coconut husk, coir and bark for use as mulch; peat moss; living lichen; mosses, namely, natural decorative mosses sold dried, dyed and preserved for use with floral arrangements, arts, crafts, and hobbyClass 031 for Mulch; dried coconut husk, coir and bark for use as mulch; peat moss; living lichen; mosses, namely, natural decorative mosses sold dried, dyed and preserved for use with floral arrangements, arts, crafts, and hobby
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 12/27/2009 and first used in commerce at least as early as 12/27/2009 , and is now in use in such commerce.
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 [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Natural Pack, Inc., a corporation of California, having an address of
      PO Box 30352
      Santa Barbara, California 93130
      United States

Proposed: Natural Pack, Inc., a corporation of California, having an address of
      PO Box 30352
      Santa Barbara, California 93130
      United States
      Email Address: uri@impulse.net

The owner's/holder's current attorney information: Victoria Carver. Victoria Carver of CARVER LAW, is located at

      PO BOX 93
      TRUCKEE, California 96160
      United States
The docket/reference number is 2019-663-TM.
      The phone number is 805-452-5267.
      The email address is VC@ETMLAW.COM

The owner's/holder's proposed attorney information: Victoria Carver. Victoria Carver of CARVER LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 93
      TRUCKEE, California 96160
      United States
The docket/reference number is 2019-663-TM.
      The phone number is 805-452-5267.
      The email address is VC@ETMLAW.COM

Victoria Carver 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):
      VICTORIA CARVER
      PRIMARY EMAIL FOR CORRESPONDENCE: VC@ETMLAW.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 2019-663-TM.
Correspondence Information (proposed):
      Victoria Carver
      PRIMARY EMAIL FOR CORRESPONDENCE: VC@ETMLAW.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 2019-663-TM.

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).

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: /vcarver/      Date: 03/09/2020
Signatory's Name: VICTORIA CARVER
Signatory's Position: ATTORNEY OF RECORD, CALIFORNIA BAR MEMBER
Signatory's Phone Number: 805-452-5267


Response Signature
Signature: /VCARVER/     Date: 03/09/2020
Signatory's Name: VICTORIA CARVER
Signatory's Position: ATTORNEY OF RECORD, CALIFORNIA BAR MEMBER

Signatory's Phone Number: 805-452-5267

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:    VICTORIA CARVER
   CARVER LAW
   
   PO BOX 93
   TRUCKEE, California 96160
Mailing Address:    Victoria Carver
   CARVER LAW
   PO BOX 93
   TRUCKEE, California 96160
        
Serial Number: 88527514
Internet Transmission Date: Mon Mar 09 14:49:35 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020030914493504
8830-88527514-710b05976a9ffc0eaa257bb4a6
57cc73be951505258faccb9a17ad6172e63dba5-
N/A-N/A-20200309140943535968