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. 88879861 KIRAVIA DYES(Standard Characters, see http://uspto.report/TM/88879861/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Fluorescent chemicals for industrial and research use; chemicals
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[ Japan application number 2019-139852 filed 11/01/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Fluorescent chemicals for industrial and research use; chemicals; chemicals, namely, fluorochromeClass 001 for Fluorescent chemicals for industrial and research use; chemicals, namely, fluorochrome
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 [ Japan application number 2019-139852 filed 11/01/2019]. 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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "DYES" apart from the mark as shown.


Translation
The wording "KIRAVIA" has no meaning in a foreign language.


Significance of wording, letter(s), or numeral(s)
"KIRAVIA" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) "KIRAVIA" has no meaning in a foreign language.


Miscellaneous Statement
The Hon. Trademark has posed a number of questions, which are set forth below with Applicant's answers: (1) Explain whether the wording "KIRAVIA" in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant's goods and/or services, or if such wording is a term of art within applicant's industry. ANSWER: Applicant responds in the negative. "KIRAVIA" itself is not a Japanese word. Rather, it is a coined word based on a Japanese adjective called "Kirabiyaka". "Kirabiyaka" has the meaning of "sparkling" or "gorgeous" in Japanese. A copy of an online Japanese dictionary definition for "Kirabiyaka" is attached. (2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language. ANSWER: Applicant responds in the negative. (3) Submit an English translation of all foreign wording in a mark. If the wording does not have meaning in a foreign language, applicant should so specify. ANSWER: Applicant has specified that "KIRAVIA" has no meaning in a foreign language. (4) Please note, the attached website states "KIRAVIA" is a coined word meaning "sparkling" in Japanese." Please confirm if this translation is accurate and provide documentation to support the translation. ANSWER: As explained above, "KIRAVIA" is a coined word based on "Kirabiyaka", an adjective having a meaning of "sparkling" or "gorgeous" in Japanese. Applicant has ascribed a meaning of "sparkling" on its website, which technically is incorrect since "KIRAVIA" is a coined word. If the Hon. Trademark Attorney Applicant thinks this justifies a translation of "KIRAVIA" as "sparkling" then Applicant requests that the Hon. Trademark Attorney make such an amendment by Examiner's Amendment. The Hon. Trademark Attorney also has inquired about the status of the underlying Japanese application upon which this application is based. Applicant respectfully responds that the Japanese registration for the mark has not yet issued.

Original PDF file:
mis-3810515990-2020110510 3714770546_._kirabiyaka_J apanese_Dictionary_Tangor in.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Correspondence Information (current):
      ROBERT B.G. HOROWITZ, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; jcupito@bakerlaw.com

The docket/reference number is 041279.3238.
Correspondence Information (proposed):
      Robert B.G. Horowitz, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; sborrero@bakerlaw.com

The docket/reference number is 041279.3238.

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: /Robert B.G. Horowitz/     Date: 11/05/2020
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant, a New York State Bar member

Signatory's Phone Number: 212 589-4200

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:    ROBERT B.G. HOROWITZ, ESQ.
   BAKER & HOSTETLER, LLP
   
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
Mailing Address:    Robert B.G. Horowitz, Esq.
   BAKER & HOSTETLER, LLP
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
        
Serial Number: 88879861
Internet Transmission Date: Thu Nov 05 11:05:36 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020110511053639
0201-88879861-750d197982ddbec715682ab0a1
eca16334f323b57b7df0d9339d6fb73a88fd139-
N/A-N/A-20201105103714770546