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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88767369 MAGNOLIA(Standard Characters, see http://uspto.report/TM/88767369/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of Applicant's MAGNOLIA mark due to an alleged likelihood of confusion with the marks in U.S. Registration Nos. 5,215,892 and 5,215,893, pursuant to the Trademark Act, Section 2(d), 15 U.S.C. Section 1052(d). The cited registered marks are as follows: Reg. No. 5,215,892, for MAGNOLIA, for use with "Milk, cheese, butter, oleo margarine, and other dairy products excluding ice cream", and Reg. No. 5,215,893, for MAGNOLIA, for use with "Milk, cheese, butter, oleo margarine, and other dairy products excluding ice cream" (the "Cited Marks"). Applicant advises the Examining Attorney that its first use of its applied-for MAGNOLIA mark, through its predecessors-in-interest, long precedes the Cited Registrant's first use of the Cited Marks. As such, Applicant has approached the Cited Registrant to negotiate a consent and coexistence agreement with respect to the parties' respective MAGNOLIA marks, and Applicant is in the process of such negotiations, which are not yet complete. Accordingly, Applicant respectfully requests that the Examining Attorney issue a final office action with regard to the 2(d) likelihood of confusion refusal, pending Applicant's completion of the consent and coexistence agreement with the Cited Registrant. Meanwhile, Applicant also herewith reserves all of its rights to make any and all additional arguments and to present any and all additional evidence in response to such final office action.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 029 for Condensed milk; sweetened condensed milk; evaporated milk
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 03/21/1890 and first used in commerce at least as early as 03/21/1890 , and is now in use in such commerce.


Proposed:
Class 029 for Condensed milk; sweetened condensed milk; evaporated milk
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 03/21/1890 and first used in commerce at least as early as 03/21/1890 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 029. The specimen(s) submitted consists of A photo of Applicant's goods, bearing 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:
SPU0-666121153-2020101320 3626301123_._MAGNOLIA_Alt ernate_Specimen.pdf
Converted PDF file(s) ( 1 page) Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Eagle Family Foods Group LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4020 Kinross Lakes Parkway
      Richfield, Ohio 44286
      United States

Proposed: Eagle Family Foods Group LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      1975 East 61st Street
      Cleveland, Ohio 44103
      United States
      Email Address: XXXX
Correspondence Information (current):
      SUZANNE K. KETLER
      PRIMARY EMAIL FOR CORRESPONDENCE: sketler@ralaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Suzanne K. Ketler
      PRIMARY EMAIL FOR CORRESPONDENCE: sketler@ralaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tlink@ralaw.com

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: /Suzanne K. Ketler/      Date: 10/13/2020
Signatory's Name: Suzanne K. Ketler
Signatory's Position: Attorney of Record, Ohio Bar Member
Signatory's Phone Number: 330.849.6641


Response Signature
Signature: /Suzanne K. Ketler/     Date: 10/13/2020
Signatory's Name: Suzanne K. Ketler
Signatory's Position: Attorney of Record, Ohio Bar Member

Signatory's Phone Number: 330.849.6641

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:    SUZANNE K. KETLER
   ROETZEL & ANDRESS
   
   222 SOUTH MAIN STREET
   AKRON, Ohio 44308
Mailing Address:    Suzanne K. Ketler
   ROETZEL & ANDRESS
   222 SOUTH MAIN STREET
   AKRON, Ohio 44308
        
Serial Number: 88767369
Internet Transmission Date: Tue Oct 13 21:03:29 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20201013210329287
835-88767369-750dba17e2bfe3ec19f31e97349
825955ee1b1fc778d3eb8138db46472c8ac3fb-N
/A-N/A-20201013203626301123