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. 88634437 BALANCE(Standard Characters, see http://uspto.report/TM/88634437/mark.png) has been amended as follows:

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

Applicant Mindsnacks, Inc. ("Applicant"), by its undersigned counsel, hereby responds to the Office Action dated December 30, 2019, which issued in connection with U.S. Application Serial Number 88/634,437 (the "Application") for the mark BALANCE ("Applicant's Mark"). The Examining Attorney has objected to registration of Applicant's Mark on the grounds that Applicant's Mark is confusingly similar to U.S. Registration No. 4,359,303 for the mark BALANCE (the "Cited Mark") owned by The Hebrew Home for the Aged at Riverdale ("Registrant"). Applicant respectfully notes that the USPTO cancelled the Cited Mark on January 31, 2020. Accordingly, Applicant respectfully requests that the Examining Attorney remove the objection to registration based on the Cited Mark under Trademark Act Section 2(d). Further, the Examining Attorney has also identified U.S. Application Serial No. 79/248,335 (the "Cited Application") as a possible bar to registration of Applicant's Mark. Applicant expressly reserves its right to argue against any objections to the registration of Applicant's Mark which may be based on the Cited Application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for downloadable software for meditation instruction in the field of health and wellness; downloadable software featuring a library of pre-recorded audio recordings in the field of meditation and mental fitness; downloadable software for meditation instruction; downloadable software for mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, self-awareness, self-mastery, and self-improvement
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 08/26/2018 and first used in commerce at least as early as 03/28/2019 , and is now in use in such commerce.


Proposed:

Tracked Text Description: downloadable software for meditation instruction in the field of health and wellness; downloadable software featuring a library of pre-recorded audio recordings in the field of meditation and mental fitness; downloadable software for meditation instruction; downloadable software for mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, self-awareness, self-mastery, and self-improvement; downloadable software featuring personalized, guided meditations, visual and haptic-based interactive activities, sleep sounds, and sleep-related meditations for mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, self-awareness, self-mastery, sleep, and self-improvementClass 009 for downloadable software for meditation instruction in the field of health and wellness; downloadable software featuring a library of pre-recorded audio recordings in the field of meditation and mental fitness; downloadable software for meditation instruction; downloadable software featuring personalized, guided meditations, visual and haptic-based interactive activities, sleep sounds, and sleep-related meditations for mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, self-awareness, self-mastery, sleep, and self-improvement
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 08/26/2018 and first used in commerce at least as early as 03/28/2019 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Mindsnacks, Inc., a corporation of Delaware, having an address of
      1479 Folsom Street
      San Francisco, California 94103
      United States

Proposed: Mindsnacks, Inc., a corporation of Delaware, having an address of
      1479 Folsom Street
      San Francisco, California 94103
      United States
      Email Address: XXXX
Correspondence Information (current):
      JESSICA L. ROTHSTEIN
      PRIMARY EMAIL FOR CORRESPONDENCE: NY-TM-Admin@goodwinprocter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jrothstein@goodwinlaw.com; sallirampersad@goodwinlaw.com

The docket/reference number is 126865204737.
Correspondence Information (proposed):
      Jessica L. Rothstein
      PRIMARY EMAIL FOR CORRESPONDENCE: NY-TM-Admin@goodwinprocter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jrothstein@goodwinlaw.com; sallirampersad@goodwinlaw.com

The docket/reference number is 126865204737.

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)
Response Signature
Signature: /Jessica L. Rothstein/     Date: 06/29/2020
Signatory's Name: Jessica L. Rothstein
Signatory's Position: Attorney of Record, NY Bar Member

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:    JESSICA L. ROTHSTEIN
   GOODWIN PROCTER LLP
   THE NEW YORK TIMES BUILDING
   620 EIGHTH AVENUE
   NEW YORK, New York 10018
Mailing Address:    Jessica L. Rothstein
   GOODWIN PROCTER LLP
   THE NEW YORK TIMES BUILDING
   620 EIGHTH AVENUE
   NEW YORK, New York 10018
        
Serial Number: 88634437
Internet Transmission Date: Mon Jun 29 17:23:27 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200629172327948
978-88634437-71074a762ebea8614d84b379697
bcc9d6ce422cd3aeed8c184822563e7d363ab-N/
A-N/A-20200629170136153110