Response to Office Action

PTO- 1957

Approved for use through 01/31/2027. 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 01/31/2027. 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. 97897321 HOT 69(Standard Characters, see http://uspto.report/TM/97897321/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 034 for Hookahs; electronic hookahs; tobacco products; tobacco; tobacco substitutes; tea for smoking as a tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers' articles; matches; shisha pipes; electronic shisha pipes; cigars; small cigars; electronic cigars; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; liquids for electronic cigarettes; smoking pipes; steam stones for water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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[ European Union Trademark - EUTM application number 018791791 filed 11/08/2022]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Hookahs; electronic hookahs; tobacco products; tobacco products, namely, tobacco grinders and tobacco pipes; tobacco; tobacco substitutes; tea for smoking as a tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers' articles; smokers' articles, namely, matches; matches; shisha pipes; electronic shisha pipes; cigars; small cigars; electronic cigars; personal vaporisers being oral vaporizers for smoking purposes and electronic cigarettes, and flavourings, other than essential oils, for use in electronic cigarettes and oral vaporizers for smokers and liquid nicotine solutions for use in electronic cigarettes; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; liquids for electronic cigarettes, namely liquid nicotine solutions for use in electronic cigarettes, cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; liquids for electronic cigarettes; smoking pipes; hookah tobacco substitutes, namely, steam stones for water pipes; steam stones for water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes, namely hookah tobacco, flavorings for tobacco, other than essential oils; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances, namely, hookah tobacco, flavorings for tobacco, other than essential oils; substances for inhalation using water pipes, in particular aromatic substancesClass 034 for Hookahs; electronic hookahs; tobacco products, namely, tobacco grinders and tobacco pipes; tobacco; tobacco substitutes; tea for smoking as a tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers' articles, namely, matches; shisha pipes; electronic shisha pipes; cigars; small cigars; electronic cigars; personal vaporisers being oral vaporizers for smoking purposes and electronic cigarettes, and flavourings, other than essential oils, for use in electronic cigarettes and oral vaporizers for smokers and liquid nicotine solutions for use in electronic cigarettes; liquids for electronic cigarettes, namely liquid nicotine solutions for use in electronic cigarettes, cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; smoking pipes; hookah tobacco substitutes, namely, steam stones for water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes, namely hookah tobacco, flavorings for tobacco, other than essential oils; substances for inhalation using water pipes, in particular aromatic substances, namely, hookah tobacco, flavorings for tobacco, other than essential oils
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 [ application number filed ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.
Correspondence Information
      CHRISTOPHER ERICKSON
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@tonkon.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 43659.

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: /Christopher Erckson/      Date: 02/13/2024
Signatory's Name: Christopher Erickson
Signatory's Position: Attorney of record
Signatory's Phone Number: 503-221-1440

Signature method: Signed directly within the form

Response Signature
Signature: /Christopher Erickson/     Date: 02/13/2024
Signatory's Name: Christopher Erickson
Signatory's Position: Attorney of record

Signatory's Phone Number: 503-221-1440 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:    CHRISTOPHER ERICKSON
   TONKON TORP LLP
   
   888 SW FIFTH AVE., SUITE 1600
   PORTLAND, Oregon 97204
Mailing Address:    Christopher Erickson
   TONKON TORP LLP
   888 SW FIFTH AVE., SUITE 1600
   PORTLAND, Oregon 97204
        
Serial Number: 97897321
Internet Transmission Date: Tue Feb 13 18:49:33 ET 2024
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2024021318493306
2195-97897321-850b72eca7c19a11b6b41c49ab
32908dbaec2ebe36ee8fdb136e27fc71734a59-N
/A-N/A-20240213182015921866