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. 90175049 JOSE CUERVO JOSE CUERVO ESPECIAL FABRICA LA ROJENA TEQUILA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9017504 9/large) has been amended as follows:

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

Tequila Cuervo La Rojena, S.A. de C.V. (TCLR) is a related company of of Tequila Cuervo S.A. de C.V. For this reason the citations to marks owned by TCLR should be withdrawn. Applicant is seeking a consent from the owner of the TEQUILA registration.

ADDITIONAL STATEMENTS
Translation
The English translation of CUERVO, ESPECIAL, and FABRICA LA ROJENA in the mark is RAVEN, SPECIAL, and THE ROJENA FACTORY.


Miscellaneous Statement
A clearer drawing of the mark is being prepared and will be submitted subsequently.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
ESPECIAL has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

Correspondence Information (current):
      JULIANNE ABELMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): fterranella@lawabel.com; cbasile@lawabel.com

The docket/reference number is 880414.
Correspondence Information (proposed):
      Julianne Abelman
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mamastrovito@lawabel.com; cbasile@lawabel.com

The docket/reference number is 880414.

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: /MAMastrovito/      Date: 04/28/2021
Signatory's Name: Marie Anne Mastrovito
Signatory's Position: Attorney
Signatory's Phone Number: 212 949 9022 ext 148

Signature method: Signed directly within the form

Response Signature
Signature: /MAMastrovito/     Date: 04/28/2021
Signatory's Name: Marie Anne Mastrovito
Signatory's Position: Attorney

Signatory's Phone Number: 212 949-9022 ext 148 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:    JULIANNE ABELMAN
   ABELMAN, FRAYNE & SCHWAB
   10TH FLOOR
   666 THIRD AVENUE
   NEW YORK, New York 10017
Mailing Address:    Julianne Abelman
   ABELMAN, FRAYNE & SCHWAB
   10TH FLOOR
   666 THIRD AVENUE
   NEW YORK, New York 10017
        
Serial Number: 90175049
Internet Transmission Date: Wed Apr 28 20:40:50 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20210428204050085
076-90175049-780893911771056483c5a4ed9f6
22ed82bcae5a2052b83510196bbd856ff307e-N/
A-N/A-20210428202245794041