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. 90028550 TRUE NORTH(Standard Characters, see http://uspto.report/TM/90028550/mark.png) has been amended as follows:

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

Applicant submits the following remarks and amendments in response to the office action that issued on September 28, 2020.

As an initial matter, Applicant requests to delete “beer; brewed sugar based beer” from its Class 32 goods. Additionally, Applicant requests to divide Class 33 out of this Application and has submitted the attached divisional application with the USPTO.

As such, the Parent Application will only cover “Seltzer water; water beverages; flavored waters” in Class 32.

Further, Applicant attaches the Trademark Trial and Appeal Board’s order whereby judgment by default is entered against Cited Registration No. 3415674.

In light of this judgment, in addition to the limited Class 32 goods set forth in the amended Parent Application, Applicant submits that the Section 2(d) likelihood of confusion refusal, as well as the pending application advisory, should be removed. In sum, Applicant requests that the Parent Application be approved for publication

EVIDENCE
Evidence has been attached: the request to divide the application and Trademark Trial and Appeal Board order.
Original PDF file:
evi_17322719102-202010161 61538681132_._2020-10-16_ Request_to_Divide_Applica tion_-_HANB.11591T.pdf
Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8
Original PDF file:
evi_17322719102-202010161 61538681132_._2020-10-15_ TTAB_-_HANB.11593N.PDF
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 032 for Seltzer water; water beverages; flavored waters; beer; brewed sugar based beer
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: Seltzer water; water beverages; flavored waters; beer; brewed sugar based beerClass 032 for Seltzer water; water beverages; flavored waters
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.
Correspondence Information (current):
      DIANE M. REED
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is HANB.11591T.
Correspondence Information (proposed):
      Diane M. Reed
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is HANB.11591T.

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: /Jessica Sganga/     Date: 10/16/2020
Signatory's Name: Jessica Sganga
Signatory's Position: Attorney of record, California bar member

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 M. REED
   KNOBBE MARTENS OLSON AND BEAR, LLP
   
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
Mailing Address:    Diane M. Reed
   KNOBBE MARTENS OLSON AND BEAR, LLP
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
        
Serial Number: 90028550
Internet Transmission Date: Fri Oct 16 16:49:18 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202010161649187
06860-90028550-75046a66e7115c310164fc4dc
04e76ff82e25c3f9b86fea956864bd778618876d
-N/A-N/A-20201016161538681132