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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
90052791 |
LAW OFFICE ASSIGNED |
LAW OFFICE 124 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/90052791/mark.png |
LITERAL ELEMENT |
MIGHTY EXPRESS |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
The color(s) orange, red, grey, white, yellow and brown is/are claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the wording MIGHTY EXPRESS in stylized font below a train design. |
ARGUMENT(S) |
i. Kindly suspend action on the captioned application, pending the submission of the corresponding Canadian Registration. ii. In response to the
Examiner's varietal name query, Applicant, upon information and belief, answers as follows: (1) Whether "MIGHTY EXPRESS" has ever been used or will be used as a varietal or cultivar name. Answer: No
(2) Whether "MIGHTY EXPRESS" has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection. Answer: No. |
GOODS AND/OR SERVICES SECTION (014) (no change) |
GOODS AND/OR SERVICES SECTION (029) (current) |
INTERNATIONAL CLASS |
029 |
DESCRIPTION |
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and
milk products, cheese, butter, yogurt; edible oils and fats for food |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
GOODS AND/OR SERVICES SECTION (029) (proposed) |
INTERNATIONAL CLASS |
029 |
TRACKED TEXT DESCRIPTION |
Meat, fish, poultry and game; Meat, fish, not live, poultry and
game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and milk products, cheese, butter, yogurt; milk and milk products excluding ice cream, ice milk and
frozen yogurt, cheese, butter, yogurt; edible oils and fats for food |
FINAL DESCRIPTION |
Meat, fish, not live, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; eggs;
milk and milk products excluding ice cream, ice milk and frozen yogurt, cheese, butter, yogurt; edible oils and fats for food |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
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. |
GOODS AND/OR SERVICES SECTION (030) (current) |
INTERNATIONAL CLASS |
030 |
DESCRIPTION |
Cocoa; cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza; tapioca and sago; flour and preparations made
from cereals; cereals, bread, pastries, cookies, biscuits, crackers and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, condiments; ice (frozen water), popcorn |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
GOODS AND/OR SERVICES SECTION (030) (proposed) |
INTERNATIONAL CLASS |
030 |
TRACKED TEXT DESCRIPTION |
Cocoa; cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza;
tapioca and sago; flour and preparations made from cereals; flour and preparations made from cereals,
namely, bread, crackers, biscuits, tarts, cakes made with cereals; cereals, bread, pastries, cookies, biscuits, crackers and confectionery; cereals, breakfast cereal, ready to eat cereal, processed cereal, cereal bars, cereal based snack foods, cereal based energy bars; bread,
pastries, cookies, biscuits, crackers and confectionery, namely, candies and chocolate, confectionery made of sugar and confectionery made of sugar substitutes; frozen confectionery; sugar, honey, condiments; chocolate; ice (frozen water),
popcorn; ice cream, sorbets and other edible ices; sugar, honey, condiments, namely, food condiments consisting primarily of ketchup
and salsa; ice being frozen water, popcorn |
FINAL DESCRIPTION |
Cocoa; cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza; tapioca and sago; flour and preparations made
from cereals, namely, bread, crackers, biscuits, tarts, cakes made with cereals; cereals, breakfast cereal, ready to eat cereal, processed cereal, cereal bars, cereal based snack foods, cereal based
energy bars; bread, pastries, cookies, biscuits, crackers and confectionery, namely, candies and chocolate, confectionery made of sugar and confectionery made of sugar substitutes; frozen
confectionery ; chocolate; ice cream, sorbets and other edible ices; sugar, honey, condiments, namely, food condiments consisting primarily of ketchup and salsa; ice being frozen water, popcorn |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
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. |
GOODS AND/OR SERVICES SECTION (031) (current) |
INTERNATIONAL CLASS |
031 |
DESCRIPTION |
Raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
GOODS AND/OR SERVICES SECTION (031) (proposed) |
INTERNATIONAL CLASS |
031 |
TRACKED TEXT DESCRIPTION |
Raw and unprocessed grains and seeds; Raw and unprocessed grains
and edible seeds; fresh fruits and vegetables, fresh herbs; live fish |
FINAL DESCRIPTION |
Raw and unprocessed grains and edible seeds; fresh fruits and vegetables, fresh herbs; live fish |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
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. |
GOODS AND/OR SERVICES SECTION (032) (current) |
INTERNATIONAL CLASS |
032 |
DESCRIPTION |
Non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for
making beverages |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
GOODS AND/OR SERVICES SECTION (032) (proposed) |
INTERNATIONAL CLASS |
032 |
TRACKED TEXT DESCRIPTION |
Non-alcoholic beverages; Non-alcoholic beverages, namely, fruit
drinks, fruit juice beverages, water beverages, non-alcoholic water based beverages, non-alcoholic carbonated beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages; syrups and
other non-alcoholic preparations for making beverages, namely, concentrates and powders used in the preparation of fruit-flavored beverages, non-alcoholic fruit extracts used in the preparation of
beverages |
FINAL DESCRIPTION |
Non-alcoholic beverages, namely, fruit drinks, fruit juice beverages, water beverages, non-alcoholic water based beverages,
non-alcoholic carbonated beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages, namely, concentrates and powders
used in the preparation of fruit-flavored beverages, non-alcoholic fruit extracts used in the preparation of beverages |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2039660 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
07/14/2020 |
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 SECTION |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the wording "MIGHTY EXPRESS" in stylized font below a train design, in which "MIGHTY" is shown in red and orange with a
red outline on a white background; "EXPRESS" is shown in yellow with a red outline and red shadows; the train is depicted in red with a grey window, yellow light, and white lining; and the train and
word "MIGHTY" are bordered in brown and yellow. The color grey on which the mark appears represents background areas and is not claimed as a feature of the mark. |
CORRESPONDENCE INFORMATION (current) |
NAME |
WILLIAM C. WRIGHT |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
mail@ipcounselors.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
William C. Wright |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
mail@ipcounselors.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Jesse R Bader/ |
SIGNATORY'S NAME |
Jesse R Bader |
SIGNATORY'S POSITION |
Attorney for Applicant |
DATE SIGNED |
02/22/2021 |
ROLE OF AUTHORIZED SIGNATORY |
Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD |
Signed directly within the form |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Feb 22 12:31:09 ET 2021 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0210222123109754747-90052
791-770a9acb8d062f03181b3
c142cf21fce924544fd58d446
bb9fb8b3fbe71968d938-N/A-
N/A-20210222121841990399 |
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.
90052791 MIGHTY EXPRESS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9005279 1/large) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
i. Kindly suspend action on the captioned application, pending the submission of the corresponding Canadian Registration. ii. In response to the Examiner's varietal name query, Applicant, upon
information and belief, answers as follows: (1) Whether "MIGHTY EXPRESS" has ever been used or will be used as a varietal or cultivar name. Answer: No (2) Whether "MIGHTY EXPRESS" has ever been used
or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection. Answer: No.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 029 for Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and milk products, cheese, butter, yogurt; edible oils
and fats for food
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.
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[ Canada application number 2039660 filed 07/14/2020]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Meat, fish, poultry and game;
Meat, fish, not live, poultry and game;
meat extracts;
preserved, frozen, dried and cooked fruits and vegetables;
jellies, jams;
eggs;
milk and milk products, cheese, butter, yogurt;
milk and milk products excluding ice cream, ice milk and frozen yogurt, cheese,
butter, yogurt;
edible oils and fats for foodClass 029 for Meat, fish, not live, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and
vegetables; jellies, jams; eggs; milk and milk products excluding ice cream, ice milk and frozen yogurt, cheese, butter, yogurt; edible oils and fats for food
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
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 [ Canada application number 2039660 filed 07/14/2020]. 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.
Applicant proposes to amend the following:
Current:
Class 030 for Cocoa; cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza; tapioca and sago; flour and preparations made from cereals; cereals, bread, pastries, cookies,
biscuits, crackers and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, condiments; ice (frozen water), popcorn
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.
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[ Canada application number 2039660 filed 07/14/2020]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Cocoa;
cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza;
tapioca and
sago;
flour and preparations made from cereals;
flour and preparations made from cereals, namely, bread, crackers,
biscuits, tarts, cakes made with cereals;
cereals, bread, pastries, cookies, biscuits, crackers and confectionery;
cereals, breakfast cereal, ready to eat cereal, processed cereal, cereal bars, cereal based snack foods, cereal based energy bars;
bread, pastries,
cookies, biscuits, crackers and confectionery, namely, candies and chocolate, confectionery made of sugar and confectionery made of sugar substitutes;
frozen
confectionery;
sugar, honey, condiments;
chocolate;
ice (frozen water), popcorn;
ice cream, sorbets and other edible ices;
sugar, honey, condiments, namely, food condiments consisting primarily of ketchup and
salsa;
ice being frozen water, popcornClass 030 for Cocoa; cocoa-based beverages, chocolate-based beverages, rice, pasta, noodles, pizza; tapioca and
sago; flour and preparations made from cereals, namely, bread, crackers, biscuits, tarts, cakes made with cereals; cereals, breakfast cereal, ready to eat cereal, processed cereal, cereal bars,
cereal based snack foods, cereal based energy bars; bread, pastries, cookies, biscuits, crackers and confectionery, namely, candies and chocolate, confectionery made of sugar and confectionery made
of sugar substitutes; frozen confectionery ; chocolate; ice cream, sorbets and other edible ices; sugar, honey, condiments, namely, food condiments consisting primarily of ketchup and salsa; ice
being frozen water, popcorn
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
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 [ Canada application number 2039660 filed 07/14/2020]. 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.
Applicant proposes to amend the following:
Current:
Class 031 for Raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs
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.
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[ Canada application number 2039660 filed 07/14/2020]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Raw and unprocessed grains and seeds;
Raw and unprocessed grains and edible seeds;
fresh fruits and vegetables, fresh herbs;
live fishClass 031 for Raw and unprocessed grains and edible seeds; fresh fruits and
vegetables, fresh herbs; live fish
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
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 [ Canada application number 2039660 filed 07/14/2020]. 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.
Applicant proposes to amend the following:
Current:
Class 032 for Non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages
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.
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[ Canada application number 2039660 filed 07/14/2020]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Non-alcoholic beverages;
Non-alcoholic beverages, namely, fruit drinks, fruit juice beverages,
water beverages, non-alcoholic water based beverages, non-alcoholic carbonated beverages;
mineral and aerated waters;
fruit beverages and fruit
juices;
syrups and other non-alcoholic preparations for making beverages;
syrups and other non-alcoholic preparations
for making beverages, namely, concentrates and powders used in the preparation of fruit-flavored beverages, non-alcoholic fruit extracts used in the preparation of beveragesClass 032 for
Non-alcoholic beverages, namely, fruit drinks, fruit juice beverages, water beverages, non-alcoholic water based beverages, non-alcoholic carbonated beverages; mineral and aerated waters; fruit
beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages, namely, concentrates and powders used in the preparation of fruit-flavored beverages, non-alcoholic fruit
extracts used in the preparation of beverages
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
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 [ Canada application number 2039660 filed 07/14/2020]. 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
Description of mark
The mark consists of the wording "MIGHTY EXPRESS" in stylized font below a train design, in which "MIGHTY" is shown in red and orange with a red outline on a white background; "EXPRESS" is shown in
yellow with a red outline and red shadows; the train is depicted in red with a grey window, yellow light, and white lining; and the train and word "MIGHTY" are bordered in brown and yellow. The color
grey on which the mark appears represents background areas and is not claimed as a feature of the mark.
Correspondence Information (current):
WILLIAM C. WRIGHT
PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
William C. Wright
PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
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: /Jesse R Bader/ Date: 02/22/2021
Signatory's Name: Jesse R Bader
Signatory's Position: Attorney for Applicant
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: WILLIAM C. WRIGHT
EPSTEIN DRANGEL LLP
60 EAST 42ND STREET, SUITE 2520
NEW YORK, New York 10165
Mailing Address: William C. Wright
EPSTEIN DRANGEL LLP
60 EAST 42ND STREET, SUITE 2520
NEW YORK, New York 10165
Serial Number: 90052791
Internet Transmission Date: Mon Feb 22 12:31:09 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021022212310975
4747-90052791-770a9acb8d062f03181b3c142c
f21fce924544fd58d446bb9fb8b3fbe71968d938
-N/A-N/A-20210222121841990399