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. 90178807 Q (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9017880 7/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 034 for Wired vaporizer for electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol; oral vaporising devices for smokers, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes; parts and fittings for the aforesaid products included in class 34; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; electronic rechargeable cigarette cases; protective cases, decorative covers and carrying cases for electronic cigarettes, tobacco heating devices and electronic smoking devices; in-car cradles and in-car holders for electronic cigarettes, tobacco heating devices and electronic smoking devices; containers for the disposal of used heated tobacco sticks; cleaners, cleaning preparations, cleaning utensils and cleaning brushes for electronic cigarettes, tobacco heating devices and electronic smoking devices
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[ Andorra application number 35243 filed 08/28/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Wired vaporizer for electronic cigarettes and electronic smoking devices; Wired oral vaporizers for smoking electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, namely, snuff tobacco; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; tobacco powder, namely, snus; snus; sticks of tobacco, namely, a tobacco product of tubular shape consisting of a pre-portioned tobacco supply surrounded by a smokable encasing material; tobacco substitutes (not for medical purposes); tobacco products for the purpose of being heated, namely, rolling tobacco and leaf tobacco; smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; electronic devices and their structural parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, namely, electronic cigarettes, cigars, and smoking pipes; matches; liquid nicotine solutions for use in electronic cigarettes; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; electronic smoking devices, namely, electronic cigarettes, cigars, and smoking pipes; electronic cigarettes; electronic smoking devices; tobacco and tobacco substitutes; smoker's articles for electronic cigarettes, namely, smokers' mouthpieces for electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; replacement and structural parts for the aforesaid products; electronic devices for the inhalation of nicotine containing aerosol; cases for electronic cigarettes also containing a rechargeable power supply; oral vaporising devices for smokers, tobacco products and tobacco substitutes; specially fitted protective cases, decorative covers and carrying cases for electronic cigarettes, tobacco heating devices and electronic smoking devices; smoker's articles for electronic cigarettes; containers for the disposal of used heated tobacco sticks, namely, ashtrays; parts and fittings for the aforesaid products included in class 34; cleaning utensils for electronic cigarettes, tobacco heating devices and electronic smoking devices, namely, pipe cleaners for tobacco pipes; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; specially adapted cleaning brushes for electronic cigarettes, tobacco heating devices and electronic smoking devices; electronic rechargeable cigarette cases; protective cases, decorative covers and carrying cases for electronic cigarettes, tobacco heating devices and electronic smoking devices; in-car cradles and in-car holders for electronic cigarettes, tobacco heating devices and electronic smoking devices; containers for the disposal of used heated tobacco sticks; cleaners, cleaning preparations, cleaning utensils and cleaning brushes for electronic cigarettes, tobacco heating devices and electronic smoking devicesClass 034 for Wired oral vaporizers for smoking electronic cigarettes and electronic smoking devices; tobacco products, namely, snuff tobacco; tobacco powder, namely, snus; sticks of tobacco, namely, a tobacco product of tubular shape consisting of a pre-portioned tobacco supply surrounded by a smokable encasing material; tobacco products for the purpose of being heated, namely, rolling tobacco and leaf tobacco; electronic devices and their structural parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, namely, electronic cigarettes, cigars, and smoking pipes; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices, namely, electronic cigarettes, cigars, and smoking pipes; electronic cigarettes; tobacco and tobacco substitutes; smoker's articles for electronic cigarettes, namely, smokers' mouthpieces for electronic cigarettes; replacement and structural parts for the aforesaid products; cases for electronic cigarettes also containing a rechargeable power supply; specially fitted protective cases, decorative covers and carrying cases for electronic cigarettes, tobacco heating devices and electronic smoking devices; containers for the disposal of used heated tobacco sticks, namely, ashtrays; cleaning utensils for electronic cigarettes, tobacco heating devices and electronic smoking devices, namely, pipe cleaners for tobacco pipes; specially adapted cleaning brushes for electronic cigarettes, tobacco heating devices and electronic smoking devices
Deleted Filing Basis: 1(b)
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 [ Andorra application number 35243 filed 08/28/2020]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 762224 registered 09/15/2020 with a renewal date of __________ and an expiration date of 09/15/2030 ], 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:
FRU0-3810821634-151253501 _._Q__Stylized__-_Swiss_r eg_and_Eng_trans__F402034 5x96B9E_.pdf
Converted PDF file(s) ( 8 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant submits home-country Switzerland Reg. No. 762224 to rely on Section 44(e) as a basis for registration and retains its priority claim under 44(d) based on Andorra Application No. 35243. Please note that the Applicant relies on the Andorra application for priority purposes only. An applicant may claim priority under Section 44(d) based upon a foreign application, and proceed to registration under Section 44(e) based upon a different foreign registration. (TMEP Sections 1303.01(a)(iii) and 1003.06)

Correspondence Information (current):
      TAMAR NIV BESSINGER
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is PMPS 2009260.
Correspondence Information (proposed):
      Tamar Niv Bessinger
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is PMPS 2009260.

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
Signature
Signatory's Name: Nicholas Mercer
Signatory's Position: Authorised Attorney
Signature method: Handwritten

Response Signature
Signature: /tnb/     Date: 04/28/2021
Signatory's Name: Tamar Niv Bessinger
Signatory's Position: Attorney of Record, New York State Bar Member

Signatory's Phone Number: 212-813-5900 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:    TAMAR NIV BESSINGER
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND ST., 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Tamar Niv Bessinger
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND ST., 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 90178807
Internet Transmission Date: Wed Apr 28 14:06:01 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021042814060168
4907-90178807-7803b92262a8ce2cc18ea72b04
489f8dff5b0a33f4e35e1273e4fba644aad5178-
N/A-N/A-20210427151253501466