TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

---

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 77010945 has been amended as follows:

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

The Examiner has continued a refusal on the basis that the foreign registration certificate specifies a different owner than Applicant.  Applicant has previously submitted that it is indeed the owner of the foreign registration.  Applicant now wishes to delete its Section 44 filing basis and proceed under Section 1(b). This would moot any issue with regard to differences in name between the Application and the foreign registration, as Applicant would no longer be relying on same.  Thus, in response to this Final Refusal, Applicant deletes the Section 44 filing basis and wishes to proceed under Section 1(b) of the Trademark Act.  All other formalities have been met and the issues raised in the Final Refusal of October 18, 2007 are now satisfied, as amendment to Section 1(b) moots all foreign registration issues.  Accordingly, Applicant respectfully requests the Examiner reconsider her Final Refusal and allow the Application to proceed to publication under Section 1(b).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Metal storage drums, metal storage tanks, tins of metal, metal cylinders for compressed gas or liquid sold empty, casings of metal , metal crates not for pets and similar metal containers for the storage and transportation of goods; metal closures for containers; replacement parts and fittings for metal storage drums, metal storage tanks, tins of metal, metal cylinders for compressed gas or liquid sold empty, casings of metal, metal crates not for pets and similar metal containers for the storage and transportation of goods
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Benelux registration number 405947 registered 03/07/1985 with a renewal date of __________ and an expiration date of 03/07/2015 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 006 for Metal storage drums, metal storage tanks, tins of metal, metal cylinders for compressed gas or liquid sold empty, casings of metal , metal crates not for pets and similar metal containers for the storage and transportation of goods; metal closures for containers; replacement parts and fittings for metal storage drums, metal storage tanks, tins of metal, metal cylinders for compressed gas or liquid sold empty, casings of metal, metal crates not for pets and similar metal containers for the storage and transportation of goods
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Containers of kraftpaper and/or cardboard
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 016 for Containers of kraftpaper and/or cardboard
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Packing padding materials of plastics for shipping; plastic wrappings, films and foils for commercial and industrial packaging uses; plastic padding for the inner-walls of transport-containers
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 017 for Packing padding materials of plastics for shipping; plastic wrappings, films and foils for commercial and industrial packaging uses; plastic padding for the inner-walls of transport-containers
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Non-metallic drums, namely plastic storage drums
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 020 for Non-metallic drums, namely plastic storage drums
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 022 for Disposable bulk container liners; sacks or bags for the transportation or storage of materials in bulk
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 022 for Disposable bulk container liners; sacks or bags for the transportation or storage of materials in bulk
Deleted Filing Basis: 44(e)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.

SIGNATURE(S)
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: /Mark A. Nieds/      Date: 04/17/2008
Signatory's Name: Mark A. Nieds
Signatory's Position: Attorney for Applicant

Request for Reconsideration Signature
Signature: /Mark A. Nieds/     Date: 04/17/2008
Signatory's Name: Mark A. Nieds
Signatory's Position: Attorney for Applicant

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 77010945
Internet Transmission Date: Thu Apr 17 15:53:01 EDT 2008
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2008041715530104
7354-77010945-42048c3fde253179dcd6ef969c
f8d34087-N/A-N/A-20080417154129240232