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. 97470338 NOURISH(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/97470338/large) has been amended as follows:

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

In response to the partial 2(d) likelihood of confusion refusal pertaining to classes 9, 41, and 44, Applicant respectfully requests that prosecution on the instant application be suspended pending the disposition of the Petition to Cancel that Applicant is filing against U.S. Registration Number 4620622 concurrently with this Response. With regard to classes 35 and 42, Applicant is filing a Request to Divide concurrently with this Response in order to allow these classes to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Providing a website featuring blogs and e-newsletters in the nature of health counseling in the field of registered dietician recommendations regarding cooking, nutrition, and managing medical problems
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/26/2022 and first used in commerce at least as early as 03/26/2022 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Providing a website featuring blogs and e-newsletters in the nature of health counseling in the field of registered dietician recommendations regarding cooking, nutrition, and managing medical problems; Providing a website featuring blogs and e-newsletters relating to health counseling in the field of registered dietician recommendations regarding cooking, nutrition, and managing medical problemsClass 041 for Providing a website featuring blogs and e-newsletters relating to health counseling in the field of registered dietician recommendations regarding cooking, nutrition, and managing medical problems
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/26/2022 and first used in commerce at least as early as 03/26/2022 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

The owner's/holder's current attorney information: Julia M. Chester. Julia M. Chester of SIDLEY AUSTIN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 2000
      2021 MCKINNEY AVENUE
      DALLAS, Texas 75201
      United States
The docket/reference number is 002000-56240.
      The phone number is 214-981-3300.
      The fax number is 214-981-3400.
      The email address is ipdocketing@sidley.com

The owner's/holder's proposed attorney information: Julia M. Chester. Other appointed attorneys are Dusan Clark. Lauren G. Grau. Julia M. Chester of SIDLEY AUSTIN 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

      SUITE 2000
      2021 MCKINNEY AVENUE
      DALLAS, Texas 75201
      United States
The docket/reference number is 100380-10040.
      The phone number is 214-981-3300.
      The fax number is 214-981-3400.
      The email address is ipdocketing@sidley.com

Julia M. Chester 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)
      JULIA M. CHESTER
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@sidley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jchester@sidley.com; mkirchhoff@sidley.com; sboughnou@sidley.com

The docket/reference number is 002000-56240.
Correspondence Information (proposed)
      Julia M. Chester
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@sidley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jchester@sidley.com; mkirchhoff@sidley.com; jschuck@sidley.com

The docket/reference number is 100380-10040.

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: /Julia M. Chester/     Date: 05/10/2023
Signatory's Name: Julia M. Chester
Signatory's Position: Attorney of record

Signatory's Phone Number: 214-981-3308 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:    JULIA M. CHESTER
   SIDLEY AUSTIN LLP
   SUITE 2000
   2021 MCKINNEY AVENUE
   DALLAS, Texas 75201
Mailing Address:    Julia M. Chester
   SIDLEY AUSTIN LLP
   SUITE 2000
   2021 MCKINNEY AVENUE
   DALLAS, Texas 75201
        
Serial Number: 97470338
Internet Transmission Date: Fri Jun 09 15:37:15 ET 2023
TEAS Stamp: USPTO/ROA-XXX.X.XXX.X-202306091537154803
70-97470338-850a44aa5d029384937506bf6dd1
f4bca6c6d4691762db1b8870746cdd51f47d-N/A
-N/A-20230506111611610568