Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77009535 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The Soap and Detergent Association (SDA) offers the following in reponse to the Office Action dated 2/22/07:

1.  Affidavits from SDA's President, Chairman of SDA's Board of Directors, and Chairman of SDA's Legal Committee accompanied by substitute specimens showing proper trademark use of the proposed mark and a statement that the substitute specimen was in use in commerce at least as early as the filing date of the application.  The substitute specimens submitted will demonstrate that SDA has used the mark as an association identifier and tagline for the services it offers to its members and the public.  SDA has used and continues to use the SDA Tagline in a variety of mediums including on its website, on annual reports distributed to members, on press releases, at industry trade shows and conferences and on other advertising and promotional materials.  As a result of SDA's substantially exclusive and continuous use of the SDA Tagline in commerce for nearly three years, SDA believes that the SDA Tagline has become distinctive of SDA's services.

2.  SDA desires to amend the identification of services as submitted in its initial application to adopt the language suggested by the Examiner.

3.  SDA desires to insert a disclaimer to the effect that SDA claims no right to use the term "U.S. Cleaning Product and Oleochemical Industries" apart from the mark as shown. 

Evidence

Original PDF file:
evi_65163198150-134011563_._DC_Affidavit.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65163198150-134011563_._MI_Affidavit.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65163198150-134011563_._NJ_Affidavit.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65163198150-134011563_._Service_Mark_Exhibit_A.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Arranging and conducting trade shows in the field of the cleaning product and oleochemical industries; Association services, namely, promoting the interests of persons interested in the cleaning product and oleochemical industries
Original Filing Basis: 1(a).
Proposed: Class 035 for Arranging and conducting trade shows in the field of the cleaning product and oleochemical industries; Association services, namely, promoting the interests of manufacturers of cleaning products and oleochmicals; Lobbying services, namely promotinng the interests of manufacturers of cleaning products and oleochemicals in the fields of legislation and regulation.
Filing Basis: 1(a).
Section 1(a), Use in Commerce: The mark was first used at least as early as 12/31/2004 and first used in commerce at least as early as 12/31/2004, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 035.
The specimen(s) submitted consists of Exhibit B -- Example SDA Membership Report Cover with Tagline on cover; Exhibit C -- Examples of SDA press releases with Tagline included; Exhibit D -- Examples of articles in trade publications discussing SDA and its services with tagline included.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Original PDF file:
SPU0-65163198150-134011563_._Service_Mark_Exhibit_D.pdf
Converted PDF file(s) (4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Original PDF file:
SPU0-65163198150-134011563_._Service_Mark_Exhibit_C.pdf
Converted PDF file(s) (12 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Original PDF file:
SPU0-65163198150-134011563_._Service_Mark_Exhibit_B_Cover.pdf
Converted PDF file(s) (1 page)
Specimen File1

Additional Statements

"No claim is made to the exclusive right to use U.S. CLEANING PRODUCT AND OLEOCHMICAL INDUSTRIES apart from the mark as shown."

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: /Michelle Radecki/      Date: 04/23/2007
Signatory's Name: Michelle Radecki
Signatory's Position: Attorney of record

Response Signature
Signature: /Michelle Radecki/     Date: 04/23/2007
Signatory's Name: Michelle Radecki
Signatory's Position: Attorney of record

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.
        
Serial Number: 77009535
Internet Transmission Date: Mon Apr 23 15:19:25 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200704231519257
43011-77009535-370b719fd7695d7579e8057a0
66d8eadaa-N/A-N/A-20070423134011563657