PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86166421
`
`LAW OFFICE 111
`
`http://tsdr.uspto.gov/img/86166421/large
`
`RAIN
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`The Examining Attorney has refused registration of the applied-for mark because of a likelihood of confusion with the marks in U.S.
`Registration Nos. 2438707 and 3306396. Specifically, the Examining Attorney states that the applicant’s mark is RAIN for alcoholic
`beverages, among a variety of other goods, while t he registrant’s marks are RAIN and RAIN stylized for vodka.
`
`Applicant submits that this refusal is now moot in view of the currently amended description of goods and services. Specifically, the
`description has been amended to remove "Alcoholic beverages except beers." Therefore, Applicant submits that there is no likelihood of
`confusion between Applicant's mark and the cited marks because the current description of goods for Applicant's mark is directed to goods
`other than vodka or alcoholic beverages.
`
`GOODS AND/OR SERVICES SECTION (011)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`011
`
`Electric beverage-making machines, namely, tea brewers and coffee brewers; Beverages, namely, hot coffee, cold coffee, hot tea, cold tea;
`Coffee, tea, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines; Coffee, tea, herbs, spices, or
`vegetation contained in plastic or metal cartridges having filters for use in brewing machines; Flavored water; Fruit flavored carbonated drinks;
`fruit beverages and fruit juices; Alcoholic beverages (except beers); Wholesale and retail store services, featuring beverage-making machines,
`beverage-dispensing machines, beverage vending machines, beverages, namely, hot coffee, cold coffee, hot tea, cold tea, flavored water,
`juices, carbonated drinks, and alcoholic drinks, coffee, tea, dried fruit, herbs, spices, or vegetation, in single-serving containers for use in
`beverage making machines, coffee, tea, dried fruit, herbs, spices, or vegetation contained in plastic or metal cartridges having filters for use in
`brewing machines, and filters for use in beverage-making machines
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (011)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`011
`
`Electric beverage-making machines, namely, tea brewers and coffee brewers; Beverages, namely, hot coffee, cold coffee, hot tea, cold tea;
`Coffee, tea, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines; Coffee, tea, herbs, spices, or
`vegetation contained in plastic or metal cartridges having filters for use in brewing machines; Flavored water; Fruit flavored carbonated drinks;
`fruit beverages and fruit juices; Alcoholic beverages (except beers); Wholesale and retail store services, featuring beverage-making machines,
`beverage-dispensing machines, beverage vending machines, beverages, namely, hot coffee, cold coffee, hot tea, cold tea, flavored water,
`juices, carbonated drinks, and alcoholic drinks, coffee, tea, dried fruit, herbs, spices, or vegetation, in single-serving containers for use in
`beverage making machines, coffee, tea, dried fruit, herbs, spices, or vegetation contained in plastic or metal cartridges having filters for use in
`
`

`

`brewing machines, and filters for use in beverage-making machines
`
`FINAL DESCRIPTION
`
`Electric beverage-making machines, namely, tea brewers and coffee brewers
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (030)(class added)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`030
`
`Beverages, namely, hot coffee, cold coffee, hot tea, cold tea; Coffee, tea, processed herbs, spices, or vegetation in the nature of tea, in single-
`serving containers for use in beverage making machines; Coffee, tea, processed herbs, spices, or vegetation in the nature of tea contained in
`plastic or metal cartridges having filters for use in brewing machines
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (032)(class added)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`032
`
`Flavored water; Fruit flavored carbonated drinks; fruit beverages and fruit juices
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (035)(class added)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Wholesale and retail store services, featuring beverage-making machines, beverage-dispensing machines, beverage vending machines,
`beverages, namely, hot coffee, cold coffee, hot tea, cold tea, flavored water, juices, carbonated drinks, and alcoholic drinks, coffee, tea, dried
`fruit, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines, coffee, tea, dried fruit, herbs, spices, or
`vegetation contained in plastic or metal cartridges having filters for use in brewing machines, and filters for use in beverage-making machines
`
`FILING BASIS
`
`PAYMENT SECTION
`
`NUMBER OF CLASSES
`
`FEE PER CLASS
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`Section 1(b)
`
`3
`
`325
`
`975
`
`/jmw/
`
`Joshua M. Warminsky
`
`Attorney of record, PA & NJ bar member
`
`215-268-3888
`
`09/30/2014
`
`/jmw/
`
`Joshua M. Warminsky
`
`Attorney of record, PA & NJ bar member
`
`215-268-3888
`
`09/30/2014
`
`YES
`
`

`

`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Tue Sep 30 16:21:06 EDT 2014
`
`USPTO/ROA-XXX.XXX.XXX.XXX
`-20140930162106336073-861
`66421-500456ffc935929372a
`19775be755b8238826ca831ee
`0db9698086bf887ce64244-CC
`-6207-2014093016003735989
`1
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86166421 RAIN(Standard Characters, see http://tsdr.uspto.gov/img/86166421/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`The Examining Attorney has refused registration of the applied-for mark because of a likelihood of confusion with the marks in U.S. Registration
`Nos. 2438707 and 3306396. Specifically, the Examining Attorney states that the applicant’s mark is RAIN for alcoholic beverages, among a
`variety of other goods, while t he registrant’s marks are RAIN and RAIN stylized for vodka.
`
`Applicant submits that this refusal is now moot in view of the currently amended description of goods and services. Specifically, the description
`has been amended to remove "Alcoholic beverages except beers." Therefore, Applicant submits that there is no likelihood of confusion between
`Applicant's mark and the cited marks because the current description of goods for Applicant's mark is directed to goods other than vodka or
`alcoholic beverages.
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 011 for Electric beverage-making machines, namely, tea brewers and coffee brewers; Beverages, namely, hot coffee, cold coffee,
`hot tea, cold tea; Coffee, tea, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines; Coffee, tea, herbs,
`spices, or vegetation contained in plastic or metal cartridges having filters for use in brewing machines; Flavored water; Fruit flavored carbonated
`drinks; fruit beverages and fruit juices; Alcoholic beverages (except beers); Wholesale and retail store services, featuring beverage-making
`machines, beverage-dispensing machines, beverage vending machines, beverages, namely, hot coffee, cold coffee, hot tea, cold tea, flavored
`water, juices, carbonated drinks, and alcoholic drinks, coffee, tea, dried fruit, herbs, spices, or vegetation, in single-serving containers for use in
`beverage making machines, coffee, tea, dried fruit, herbs, spices, or vegetation contained in plastic or metal cartridges having filters for use in
`brewing machines, and filters for use in beverage-making machines
`Original Filing Basis:
`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.
`
`Proposed:
`Tracked Text Description: Electric beverage-making machines, namely, tea brewers and coffee brewers; Beverages, namely, hot coffee, cold
`
`

`

`coffee, hot tea, cold tea; Coffee, tea, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines; Coffee, tea,
`herbs, spices, or vegetation contained in plastic or metal cartridges having filters for use in brewing machines; Flavored water; Fruit flavored
`carbonated drinks; fruit beverages and fruit juices; Alcoholic beverages (except beers); Wholesale and retail store services, featuring beverage-
`making machines, beverage-dispensing machines, beverage vending machines, beverages, namely, hot coffee, cold coffee, hot tea, cold tea,
`flavored water, juices, carbonated drinks, and alcoholic drinks, coffee, tea, dried fruit, herbs, spices, or vegetation, in single-serving containers for
`use in beverage making machines, coffee, tea, dried fruit, herbs, spices, or vegetation contained in plastic or metal cartridges having filters for use
`in brewing machines, and filters for use in beverage-making machines
`
`Class 011 for Electric beverage-making machines, namely, tea brewers and coffee brewers
`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.
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 030 for Beverages, namely, hot coffee, cold coffee, hot tea, cold tea; Coffee, tea, processed herbs, spices, or vegetation in the nature
`of tea, in single-serving containers for use in beverage making machines; Coffee, tea, processed herbs, spices, or vegetation in the nature of tea
`contained in plastic or metal cartridges having filters for use in brewing machines
`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.
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 032 for Flavored water; Fruit flavored carbonated drinks; fruit beverages and fruit juices
`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.
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 035 for Wholesale and retail store services, featuring beverage-making machines, beverage-dispensing machines, beverage vending
`machines, beverages, namely, hot coffee, cold coffee, hot tea, cold tea, flavored water, juices, carbonated drinks, and alcoholic drinks, coffee, tea,
`dried fruit, herbs, spices, or vegetation, in single-serving containers for use in beverage making machines, coffee, tea, dried fruit, herbs, spices, or
`vegetation contained in plastic or metal cartridges having filters for use in brewing machines, and filters for use in beverage-making machines
`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.
`
`FEE(S)
`
`

`

`Fee(s) in the amount of $975 is being submitted.
`
`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. Section 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 amendment to allege use (AAU) unsigned, all
`statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application
`or AAU and this submission made on information and belief are believed to be true.
`
`STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section
`1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service
`mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the
`mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and
`such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the
`mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU;
`and to the best of the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or
`mistake, or to deceive.
`
`STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
`Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in
`commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the
`applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of
`the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or mistake, or to
`deceive.
`
`Signature: /jmw/      Date: 09/30/2014
`Signatory's Name: Joshua M. Warminsky
`Signatory's Position: Attorney of record, PA & NJ bar member
`Signatory's Phone Number: 215-268-3888
`
`Response Signature
`Signature: /jmw/     Date: 09/30/2014
`Signatory's Name: Joshua M. Warminsky
`Signatory's Position: Attorney of record, PA & NJ bar member
`
`Signatory's Phone Number: 215-268-3888
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`RAM Sale Number: 86166421
`RAM Accounting Date: 10/01/2014
`
`Serial Number: 86166421
`Internet Transmission Date: Tue Sep 30 16:21:06 EDT 2014
`TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20140930162106
`336073-86166421-500456ffc935929372a19775
`be755b8238826ca831ee0db9698086bf887ce642
`44-CC-6207-20140930160037359891
`
`        
`        
`

`

`RAM SALE NUMBER: 86166421
`
`INTERNET TRANSMISSION DATE:
`
`SERIAL NUMBER:
`
`2014/09/30
`
`86/166421
`
`Description
`
`Fee
`Code
`
`Transaction
`Date
`
`New App
`
`700]
`
`2014/09/30
`
`Fee
`
`325
`
`Number Of
`Classes
`
`Total Fees
`Paid
`
`3
`
`RAM ACCOUNTING DATE: 20141001
`
`975
`
`