Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77445037 has been amended as follows:

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

By Office Action dated November 10, 2009, the Examining Attorney has set forth an additional requirement directed to the term "non-metal building materials" set forth in Class 19.  This requirement has been addressed in the present response. 

 

Moreover, Applicant has amended the description of goods relating to Class 17 to delete "waterproof sealants for treating cracks, consolidating renders, concrete, masonry and other substrates for stabilizing friable and porous surfaces."  As discussed in Applicant's earlier response of September 18, 2009, Applicant's mark will be used in connection with "sealers", not in connection with "sealants".  Accordingly, Applicant has amended Class 2 to add "sealer coatings for treating cracks, consolidating renders, concrete, masonry and other substrates and for stabilizing friable and porous surfaces."  In this regard, the Trademark ID Manual indicates that sealer coatings are properly classified in International Class 2.

 

Should the Examining Attorney have any questions regarding this amendment, he is respectfully invited to contact the undersigned attorney.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for Paints, varnishes, lacquers; coatings in the nature of paint and decorative and protective coverings in the nature of elastomeric, polymer-based architectural protective coatings for the building and civil engineering industry; paints and decorative and protective coverings, namely, paints, resin-based coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; pasty coatings used as priming coats, namely, primers; priming coats, namely, paint primers; lime wash paint; preservatives against rust in the nature of a coating; anti-corrosive preparations, namely, anti-corrosive coatings, paints and primers; protective preparations for building materials, namely, architectural protective coatings; anti-corrosive coatings; pigments; bonding primers, namely, primers for use with leveling compounds, tile adhesives, repair mortars and one-coat renders for regulating the porosity of surfaces, improving the adhesion to surfaces, and preventing air bubbles
Original Filing Basis:
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)).

Proposed:
Tracked Text Description: Paints, varnishes, lacquers; coatings in the nature of paint and decorative and protective coverings in the nature of elastomeric, polymer-based architectural protective coatings for the building and civil engineering industry; paints and decorative and protective coverings, namely, paints, resin-based coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; pasty coatings used as priming coats, namely, primers; priming coats, namely, paint primers; lime wash paint; preservatives against rust in the nature of a coating; anti-corrosive preparations, namely, anti-corrosive coatings, paints and primers; protective preparations for building materials, namely, architectural protective coatings; anti-corrosive coatings; pigments; bonding primers, namely, primers for use with leveling compounds, tile adhesives, repair mortars and one-coat renders for regulating the porosity of surfaces, improving the adhesion to surfaces, and preventing air bubbles; sealer coatings for treating cracks, consolidating renders, concrete, masonry and other substrates and for stabilizing friable and porous surfacesClass 002 for Paints, varnishes, lacquers; coatings in the nature of paint and decorative and protective coverings in the nature of elastomeric, polymer-based architectural protective coatings for the building and civil engineering industry; paints and decorative and protective coverings, namely, paints, resin-based coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; pasty coatings used as priming coats, namely, primers; priming coats, namely, paint primers; lime wash paint; preservatives against rust in the nature of a coating; anti-corrosive preparations, namely, anti-corrosive coatings, paints and primers; protective preparations for building materials, namely, architectural protective coatings; anti-corrosive coatings; pigments; bonding primers, namely, primers for use with leveling compounds, tile adhesives, repair mortars and one-coat renders for regulating the porosity of surfaces, improving the adhesion to surfaces, and preventing air bubbles; sealer coatings for treating cracks, consolidating renders, concrete, masonry and other substrates and for stabilizing friable and porous surfaces
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 Materials used for thermal insulation and sound insulation, namely, building insulation; packing, stopping and insulating materials, namely, phenolic insulant in the nature of phenolic foam insulation for use in building and construction, polyurethane insulant in the nature of polyurethane foam for use as building insulation, glass wool and mineral wool for insulation; wooden particle and fiber boards for use as building insulation; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for joints; waterproof sealants for treating cracks, consolidating renders, concrete, masonry and other substrates and for stabilizing friable and porous surfaces
Original Filing Basis:
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)).

Proposed:
Tracked Text Description: Materials used for thermal insulation and sound insulation, namely, building insulation; packing, stopping and insulating materials, namely, phenolic insulant in the nature of phenolic foam insulation for use in building and construction, polyurethane insulant in the nature of polyurethane foam for use as building insulation, glass wool and mineral wool for insulation; wooden particle and fiber boards for use as building insulation; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for joints; waterproof sealants for treating cracks, consolidating renders, concrete, masonry and other substrates and for stabilizing friable and porous surfacesClass 017 for Materials used for thermal insulation and sound insulation, namely, building insulation; packing, stopping and insulating materials, namely, phenolic insulant in the nature of phenolic foam insulation for use in building and construction, polyurethane insulant in the nature of polyurethane foam for use as building insulation, glass wool and mineral wool for insulation; wooden particle and fiber boards for use as building insulation; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for joints
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 019 for Non-metal building materials; mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, dampproofing mortar, repair mortar; fairing mortar, leveling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic tiles and natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar and bituminous wall coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; asphalt and bitumen, bituminous preparations for building, namely, bitumen asphalt and bitumen-based coatings for walls; packing, stopping and insulating materials, namely, insulating mortars
Original Filing Basis:
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)).

Proposed:
Tracked Text Description: Non-metal building materials; Non-metal building materials, namely, mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, dampproofing mortar, repair mortar; mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, dampproofing mortar, repair mortar; fairing mortar, leveling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic tiles and natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar and bituminous wall coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; asphalt and bitumen, bituminous preparations for building, namely, bitumen asphalt and bitumen-based coatings for walls; packing, stopping and insulating materials, namely, insulating mortarsClass 019 for Non-metal building materials, namely, mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, dampproofing mortar, repair mortar; fairing mortar, leveling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic tiles and natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar and bituminous wall coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; asphalt and bitumen, bituminous preparations for building, namely, bitumen asphalt and bitumen-based coatings for walls; packing, stopping and insulating materials, namely, insulating mortars
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)).

SIGNATURE(S)
Response Signature
Signature: /r. glenn schroeder/     Date: 01/20/2010
Signatory's Name: R. Glenn Schroeder
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.

        
Serial Number: 77445037
Internet Transmission Date: Wed Jan 20 16:55:42 EST 2010
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2010012016554274
9734-77445037-4601c86e543682e15d9ffd9c5e
c39084fb-N/A-N/A-20100120163752258567