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. 88681894 PODID(Standard Characters, see http://uspto.report/TM/88681894/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer software; downloadable software for mobile devices; software for use with oral vaporizers, electronic cigarettes
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: Computer software; Downloadable computer software for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; downloadable software for mobile devices; downloadable software for mobile devices for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; software for use with oral vaporizers, electronic cigarettes; downloadable software for tracking battery usage for use with oral vaporizers, electronic cigarettes; electronic cigarettes and oral vaporizers for smokers accessories, namely, batteries and chargers for electronic cigarettesClass 009 for Downloadable computer software for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; downloadable software for mobile devices for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; downloadable software for tracking battery usage for use with oral vaporizers, electronic cigarettes; electronic cigarettes and oral vaporizers for smokers accessories, namely, batteries and chargers for electronic cigarettes
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.

Applicant proposes to amend the following:

Current:
Class 034 for Electronic cigarettes; electronic vaporizers; oral vaporizers for smokers; flavorings for use in electronic cigarettes and electronic vaporizers; liquid solution for use in electronic cigarettes; electronic cigarette and vaporizer refills; electronic cigarette and vaporizer cartridges; and accessories therefor
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: Electronic cigarettes; electronic vaporizers; electronic oral vaporizers for smokers; oral vaporizers for smokers; flavorings for use in electronic cigarettes and electronic vaporizers; flavorings, other than essential oils, for use in electronic cigarettes and electronic oral vaporizers for smokers; liquid solution for use in electronic cigarettes; electronic cigarette and oral vaporizer for smokers refills being chemical flavorings in liquid form used to refill cartridges for electronic cigarette and oral vaporizers for smokers; electronic cigarette and vaporizer refills; electronic cigarette and oral vaporizer for smokers refill cartridges sold empty; electronic cigarette and vaporizer cartridges; and accessories therefor, namely, electronic cigarette and vaporizer pods, cases for electronic cigarettes and oral vaporizers for smokers, skins for electronic cigarettes and oral vaporizers for smokers, cleaning tools for electronic cigarettes and oral vaporizers for smokers, mouth pieces for electronic cigarettes and oral vaporizers for smokers; and accessories thereforClass 034 for Electronic cigarettes; electronic oral vaporizers for smokers; oral vaporizers for smokers; flavorings, other than essential oils, for use in electronic cigarettes and electronic oral vaporizers for smokers; electronic cigarette and oral vaporizer for smokers refills being chemical flavorings in liquid form used to refill cartridges for electronic cigarette and oral vaporizers for smokers; electronic cigarette and oral vaporizer for smokers refill cartridges sold empty; and accessories therefor, namely, electronic cigarette and vaporizer pods, cases for electronic cigarettes and oral vaporizers for smokers, skins for electronic cigarettes and oral vaporizers for smokers, cleaning tools for electronic cigarettes and oral vaporizers for smokers, mouth pieces for electronic cigarettes and oral vaporizers for smokers
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing online non-downloadable computer software for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; providing online non-downloadable software for tracking battery usage for use with oral vaporizers, electronic cigarettes
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: Pax Labs, Inc., a corporation of Delaware, having an address of

            2nd Floor      660 Alabama Street
      San Francisco, California 94110
      United States

Proposed: Pax Labs, Inc., a corporation of Delaware, having an address of
      2nd Floor
      660 Alabama Street
      San Francisco, California 94110
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant has further revised the description of goods and services and believes that as amended, there is no likelihood of confusion with any of the Cited Registrations or the Cited Pending Application and the present application should proceed to publication.

Correspondence Information (current):
      STEPHANIE H. BALD
      PRIMARY EMAIL FOR CORRESPONDENCE: PAXdocketing@kelly-ip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Stephanie.Bald@kelly-ip.com; kelu.sullivan@kelly-ip.com; kelly.kurtz@kelly-ip.com

The docket/reference number is 310.0096.
Correspondence Information (proposed):
      Stephanie H. Bald
      PRIMARY EMAIL FOR CORRESPONDENCE: PAXdocketing@kelly-ip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Stephanie.Bald@kelly-ip.com; kelu.sullivan@kelly-ip.com; kelly.kurtz@kelly-ip.com

The docket/reference number is 310.0096.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /KLS/     Date: 06/16/2020
Signatory's Name: Kelu Sullivan
Signatory's Position: Attorney for Applicant, DC Bar member

Signatory's Phone Number: 2028083570

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:    STEPHANIE H. BALD
   KELLY IP, LLP
   SUITE 300
   1300 19TH STREET, NW
   WASHINGTON, District of Columbia 20036
Mailing Address:    Stephanie H. Bald
   KELLY IP, LLP
   SUITE 300
   1300 19TH STREET, NW
   WASHINGTON, District of Columbia 20036
        
RAM Sale Number: 88681894
RAM Accounting Date: 06/16/2020
        
Serial Number: 88681894
Internet Transmission Date: Tue Jun 16 13:33:07 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200616133307637
723-88681894-710196ab5fbbb1ffc097e31dacf
bd855a31a57a86598a44abcff7e544183de574-C
C-33065781-20200616123353073720