Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88895119 ORGANIX (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8889511 9/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Baby food; beverages for babies; food and beverages for infants; infant formula; baby milk formula; replacement for breast milk; replacement for baby milk; baby milk powder; complementary foods for babies; gluten-free baby food; gluten-free food and food additives, all adapted for medical purposes
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: Baby food; beverages for babies; nutritionally fortified food and beverages for infants; food and beverages for infants; infant formula; baby milk formula; powdered milk for babies; replacement for breast milk; complementary foods for babies, namely, cereal-based baby foods, baby juices, fruit punches, baby desserts, and baby snacks; replacement for baby milk; gluten-free baby food; baby milk powder; all the foregoing being wholly or substantially organic; complementary foods for babies; gluten-free food and food additives, all adapted for medical purposesClass 005 for Baby food; nutritionally fortified food and beverages for infants; infant formula; baby milk formula; powdered milk for babies; complementary foods for babies, namely, cereal-based baby foods, baby juices, fruit punches, baby desserts, and baby snacks; gluten-free baby food; all the foregoing being wholly or substantially organic
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 029 for Preserved, frozen, dried and cooked fruits and vegetables; fruit and vegetable based snack foods and bars; fruit slices; fruit chips; vegetable chips; compotes; fruit and vegetable purée; prepared meat; preserved meat; processed meat; milk products containing fruit pulp and fruit aromas; milk and milk products; yogurt
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: Preserved, frozen, dried and cooked fruits and vegetables; fruit and vegetable based snack foods and bars; fruit slices; fruit chips; vegetable chips; compotes; fruit and vegetable purée; prepared meat; preserved meat; processed meat; milk products containing fruit pulp and fruit aromas; milk products containing fruit pulp and fruit aromas, namely, yogurt containing fruit; milk and milk products; milk and milk products, excluding ice cream, ice milk and frozen yogurt; yogurt; all the foregoing being wholly or substantially organicClass 029 for Preserved, frozen, dried and cooked fruits and vegetables; fruit and vegetable based snack foods and bars; fruit slices; fruit chips; vegetable chips; compotes; fruit and vegetable purée; prepared meat; preserved meat; processed meat; milk products containing fruit pulp and fruit aromas, namely, yogurt containing fruit; milk and milk products, excluding ice cream, ice milk and frozen yogurt; yogurt; all the foregoing being wholly or substantially organic
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 030 for Cereal preparations; breakfast cereals; muesli; cereal bars; rice; rice-, cereal- and corn-based snack foods; puffed corn snacks; crackers; rice-based prepared meals; oatmeal; porridge; wafers
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: Cereal preparations; Cereal preparations, namely, ready-to-eat cereals, processed cereals, and cereal-based snack foods; breakfast cereals; muesli; cereal bars; rice; rice-, cereal- and corn-based snack foods; puffed corn snacks; crackers; rice-based prepared meals; oatmeal; porridge; wafers; wafers, all the foregoing being wholly or substantially organicClass 030 for Cereal preparations, namely, ready-to-eat cereals, processed cereals, and cereal-based snack foods ; breakfast cereals; muesli; cereal bars; rice; rice-, cereal- and corn-based snack foods; puffed corn snacks; crackers; rice-based prepared meals; oatmeal; porridge; wafers, all the foregoing being wholly or substantially organic
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 032 for Smoothies
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: Smoothies; Smoothies, the foregoing being wholly or substantially organicClass 032 for Smoothies, the foregoing being wholly or substantially organic
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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


Description of mark
The mark consists of the wording 'ORGANIX' in white stylized letters, with a heart design instead of a dot over the letter "I", appearing in a dark green curved peanut-like design.

Miscellaneous Statement
Information Regarding the Goods - Potential Deceptiveness Refusal - Applicant responds to the Examining Attorney's request for information regarding the goods as follows: (1) Applicant's goods listed in the application do or will contain or consist of wholly or substantially organic ingredients. (2) Applicant submits excerpts from its website www.organix.com featuring its goods. (3) Applicant's goods consist of organic food products primarily for infants and children. Their purpose is to provide delicious and nutritious foods free from artificial colors, preservatives, chemicals and pesticides. The channels of trade would be large chain stores, supermarkets, grocery stores, health food stores and online retail stores.

Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site1.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site2.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site3.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site4.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site5.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Original PDF file:
mis-160793250-20210130170 544823721_._ORGANIX_-_web site6.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Correspondence Information (current):
      Diane Donnelly
      PRIMARY EMAIL FOR CORRESPONDENCE: ddonnelly@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5701.
Correspondence Information (proposed):
      Diane Donnelly
      PRIMARY EMAIL FOR CORRESPONDENCE: ddonnelly@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5701.

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: /Diane Donnelly/     Date: 01/30/2021
Signatory's Name: Diane Donnelly
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 212-661-1400 Signature method: Signed directly within the form

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:    Diane Donnelly
   VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO
   
   60 EAST 42ND STREET SUITE 1948
   NEW YORK, New York 10165
Mailing Address:    Diane Donnelly
   VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO
   60 EAST 42ND STREET SUITE 1948
   NEW YORK, New York 10165
        
Serial Number: 88895119
Internet Transmission Date: Sat Jan 30 17:37:10 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20210130173710136
710-88895119-76022aa5d3de941c916d2261d10
482f63f323f16413ed5bb934fe2a84def3731ded
-N/A-N/A-20210130170544823721