| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76610419 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
First, the Examining Attorney has refused registration on the ground that the proposed mark is merely a surname. In response, Applicant requests registration of this mark under Section 2(f) since the mark has become distinctive of Applicant's goods by reason of substantially exclusive and continuous use in commerce by the Applicant and its predecessors-in-title for the five years preceding the date of this response. Second, the Examining Attorney objected to the original identification of goods. In response, Applicant has hereby amended the indentification consistent with the identification proposed by the Examining Attorney, except that the Applicant has maintained "collators" in the Class 7 identification. Applicant respectfully submits that Class 7 is the appropriate classification for its collators. Applicant does not sell collators for office use, but instead uses the mark on large industrial equipment. An example of one of its products is attached to this response. Moreover, such large collating equipment is regularly registered in Class 7, as evidenced by the following U.S. Trademark Registration Nos.: 2,577,036; 2,534,820; 2,469,480; 2,731,338; 2,831,876; and 2,827,781. Applicant thus respectfully requests that the identification as amended be approved. Finally, Applicant withdraws its claim of ownership to U.S. Trademark Registration No. 0761277 as it has been cancelled. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT9\IMAGEOUT9 \766\104\76610419\xml1\RO A0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Picture of one of Applicant's goods |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| printing presses and parts therefore; printing press equipment; and collators and collating equipment, | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 05/06/1960 |
| FIRST USE IN COMMERCE DATE | 05/06/1960 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| Printing press equipment, namely, printing presses and parts therefor; collators | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 05/06/1960 |
| FIRST USE IN COMMERCE DATE | 05/06/1960 |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Jeffrey M. Becker/ |
| SIGNATORY NAME | Jeffrey M. Becker |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 09/23/2005 |
| RESPONSE SIGNATURE | /Jeffrey M. Becker/ |
| SIGNATORY NAME | Jeffrey M. Becker |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 09/23/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Sep 23 17:32:42 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200509 23173242831313-76610419-2 001d1b36edde0f5b3b6ccd788 b3141c5-N-N-2005092317303 4748654 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76610419 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
First, the Examining Attorney has refused registration on the ground that the proposed mark is merely a surname. In response, Applicant requests registration of this mark under Section 2(f) since the mark has become distinctive of Applicant's goods by reason of substantially exclusive and continuous use in commerce by the Applicant and its predecessors-in-title for the five years preceding the date of this response. Second, the Examining Attorney objected to the original identification of goods. In response, Applicant has hereby amended the indentification consistent with the identification proposed by the Examining Attorney, except that the Applicant has maintained "collators" in the Class 7 identification. Applicant respectfully submits that Class 7 is the appropriate classification for its collators. Applicant does not sell collators for office use, but instead uses the mark on large industrial equipment. An example of one of its products is attached to this response. Moreover, such large collating equipment is regularly registered in Class 7, as evidenced by the following U.S. Trademark Registration Nos.: 2,577,036; 2,534,820; 2,469,480; 2,731,338; 2,831,876; and 2,827,781. Applicant thus respectfully requests that the identification as amended be approved. Finally, Applicant withdraws its claim of ownership to U.S. Trademark Registration No. 0761277 as it has been cancelled. |
|
| Evidence | |
| Evidence in the nature of Picture of one of Applicant's goods has been attached. | |
| Evidence-1 | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 007 for printing presses and parts therefore; printing press equipment; and collators and collating equipment, | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 007 for Printing press equipment, namely, printing presses and parts therefor; collators | |
| Additional Statements | |
| The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. | |
| Declaration Signature |
|
| If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Jeffrey M. Becker/ Date: 09/23/2005 | |
| Signatory's Name: Jeffrey M. Becker | |
| Signatory's Position: Attorney | |
| Response Signature | |
| Signature: /Jeffrey M. Becker/ Date: 09/23/2005 | |
| Signatory's Name: Jeffrey M. Becker | |
| Signatory's Position: Attorney | |
| Serial Number: 76610419 | |
| Internet Transmission Date: Fri Sep 23 17:32:42 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20050923173242831313- 76610419-2001d1b36edde0f5b3b6ccd788b3141 c5-N-N-20050923173034748654 |
