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. 90080210 ENIGMA(Standard Characters, see http://uspto.report/TM/90080210/mark.png) has been amended as follows:

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

The examining attorney has denied registration of the proposed mark ENIGMA on the ground that it is confusingly similar to the marks in Registration Nos. 4815383 and 4705938, namely, ENIGMA BY SIBERIAN HEALTH and ENIGMA NATURE. A review of the trademark status document and retrieval system indicates that the registrant is due to file Declarations of Use or Excusable Nonuse under Section 71 for its registrations. The registrant does not appear to be using the cited marks in U.S. commerce and most likely has never used the cited marks in U.S. commerce. Therefore, the applicant respectfully requests that the examining attorney suspend further action on the application pending the potential cancellation of the cited registrations.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Perfumery; perfume; parfum; perfume extrait; fine fragrance; eau de parfum; eau de toilette; cologne; after-shave; perfumed sprays for the hair; room fragrance; fragrance diffusers
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 010918662 registered 10/09/2012 with a renewal date of 05/28/2022 and an expiration date of 05/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 003 for Perfumery; perfume; parfum; perfume extrait; fine fragrance; eau de parfum; eau de toilette; cologne; after-shave; perfumed sprays for the hair; room fragrance; fragrance diffusers
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 010918662 registered 10/09/2012 with a renewal date of 05/28/2022 and an expiration date of 05/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-260119649024e80c4926 7a054f8a0f3-195706751_._E U_Registration_No._010918 662_ENIGMA_-_Certificate.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The owner's/holder's current attorney information: Christine M. Baker. Christine M. Baker of Fisher Broyles, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      470 Atlantic Avenue, 4th Floor
      Boston, Massachusetts 02210
      United States
The docket/reference number is 014898T010US.
      The phone number is 617-699-9340.
      The email address is docketing@fisherbroyles.com

The owner's/holder's proposed attorney information: Christine M. Baker. Other appointed attorneys are Brooks Bruneau, Christopher Turk, Anne E. Keenan Yates, Richard M. Lehrer & Lawrence Robins. Christine M. Baker of Fisher Broyles, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      470 Atlantic Avenue, 4th Floor
      Boston, Massachusetts 02210
      United States
The docket/reference number is 014898T010US.
      The phone number is 617-699-9340.
      The email address is docketing@fisherbroyles.com

Christine M. Baker submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Christine M. Baker
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@fisherbroyles.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): christine.baker@fisherbroyles.com

The docket/reference number is 014898T010US.
Correspondence Information (proposed):
      Christine M. Baker
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@fisherbroyles.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): christine.baker@fisherbroyles.com

The docket/reference number is 014898T010US.

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: /cmbaker/     Date: 05/21/2021
Signatory's Name: Christine M. Baker
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 6176999340 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:    Christine M. Baker
   Fisher Broyles, LLP
   
   470 Atlantic Avenue, 4th Floor
   Boston, Massachusetts 02210
Mailing Address:    Christine M. Baker
   Fisher Broyles, LLP
   470 Atlantic Avenue, 4th Floor
   Boston, Massachusetts 02210
        
Serial Number: 90080210
Internet Transmission Date: Fri May 21 20:03:49 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXXX-20210521200349953875-90080210-7
809b3e325a198b1a9a734036c3d9cc72be46b841
8111f7fce98d116150453994-N/A-N/A-2021052
1195706751771