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. 88914773 LAVA(Standard Characters, see http://uspto.report/TM/88914773/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: PDF of argument, LAVABOX agreement and PURLAVA agreement
Original PDF file:
evi_63764866-202102161229 16819808_._LAVA__Ser_No_8 8914773__Response_to_Offi ce_Action.PDF
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_63764866-202102161229 16819808_._ent_Agreement_ bt_King_and_Jocor_re._LAV A__LAVA2__and_LAVABOX.PDF
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_63764866-202102161229 16819808_._PURLAVA_Signed _Agreement.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 034 for Nicotine-based liquid, namely, liquid nicotine used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes
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 06/18/2018 and first used in commerce at least as early as 06/18/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Nicotine-based liquid, namely, liquid nicotine used to refill electronic cigarettes; Nicotine-based liquid, namely, liquid nicotine solutions used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; cartridges sold filled with liquid nicotine solutions for electronic cigarettes; electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettesClass 034 for Nicotine-based liquid, namely, liquid nicotine solutions used to refill electronic cigarettes; cartridges sold filled with liquid nicotine solutions for electronic cigarettes; electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes
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 06/18/2018 and first used in commerce at least as early as 06/18/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 034. The specimen(s) submitted consists of photograph of product packaging 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:
SPU0-63764866-20210216122 916819808_._LAVA_substitu te_specimen.PDF
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      Mark H. Anania
      PRIMARY EMAIL FOR CORRESPONDENCE: manania@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kknoll@mccarter.com; crodrigue@mccarter.com

The docket/reference number is 131811-00003.
Correspondence Information (proposed):
      Mark H. Anania
      PRIMARY EMAIL FOR CORRESPONDENCE: manania@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kknoll@mccarter.com; crodrigue@mccarter.com

The docket/reference number is 131811-00003.

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: /fadisalim/      Date: 02/16/2021
Signatory's Name: Fadi Salim
Signatory's Position: Owner
Signatory's Phone Number: 9733564801

Signature method: Sent to third party for signature

Response Signature
Signature: /Mark H. Anania/     Date: 02/16/2021
Signatory's Name: Mark H. Anania
Signatory's Position: Attorney of Record

Signatory's Phone Number: 9738485302 Signature method: Sent to third party for signature

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:    Mark H. Anania
   McCarter & English, LLP
   
   100 Mulberry Street, 4 Gateway Center
   Newark, New Jersey 07102
Mailing Address:    Mark H. Anania
   McCarter & English, LLP
   100 Mulberry Street, 4 Gateway Center
   Newark, New Jersey 07102
        
Serial Number: 88914773
Internet Transmission Date: Tue Feb 16 13:32:44 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202102161332444653
43-88914773-770db1e747cc63376c1663ec5365
d7381b6fe7cda24f646c6c97fca66c69f757-N/A
-N/A-20210216122916819808