Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 77846780 has been amended as follows:

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

AMENDMENT AND RESPONSE

Ascend Performance Materials LLC (“Applicant”) offers this Response to the Office Action, emailed January 20, 2010, in connection with the above-captioned application (the “Application”) for the mark COLORSHIELD (the “Mark”).  

AMENDMENT

I.          Identification of Goods

            Please delete the current identification of goods covered by the Application in its entirety and replace it with the following:

“Stain resistant synthetic fibers and filaments for use in the manufacture of yarn for carpets,” in Class 22.

 

RESPONSE

I.          Significance Inquiry

            The Examining Attorney requires an explanation of whether COLORSHIELD has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within Applicant’s industry.  The Examining Attorney also requires an explanation of whether the Mark has any meaning as an acronym or abbreviation. 

            Other than as a trademark, Applicant advises the Examining Attorney that the Mark has no meaning or significance and is not a term of the art within Applicant’s industry.  Applicant further advises the Examining Attorney that the Mark does not have any meaning as an acronym or abbreviation.  

II.        Current Application is a Duplicate of a Registration

            The Examining Attorney has preliminarily refused registration of the Application on the grounds that it is a duplication of U.S. Reg. No. 2,774,040 for COLORSHIELD (the “Registration”).  The Registration was cancelled on May 22, 2010.  Applicant attaches a copy of the TARR report evidencing the cancellation of the Registration.

CONCLUSION

By this Response, Applicant believes that it has satisfactorily addressed the issues raised by the Examining Attorney in the Office Action.  Therefore, Applicant respectfully requests that the Examining Attorney approve the Application for publication at an early date.

Applicant requests that the Examining Attorney contact Dana S. Gross at (202) 739-5151 or dgross@morganlewis.com if there are any further questions regarding the Application.

EVIDENCE
Evidence in the nature of copy of the TARR pages for U.S. Reg. No. 2,774,040 has been attached.
Original PDF file:
evi_65207692-170646137_._COLORSHIELD_-_Reg_No_2774040.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 022 for Stain resistant synthetic fibers, filaments, and ribbon-like extrusions for use in the manufacture of yarn for carpets
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: Stain resistant synthetic fibers, filaments, and ribbon-like extrusions for use in the manufacture of yarn for carpets; Stain resistant synthetic fibers and filaments for use in the manufacture of yarn for carpetsClass 022 for Stain resistant synthetic fibers and filaments for use in the manufacture of yarn for carpets
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)).

ADDITIONAL STATEMENTS
COLORSHIELD appearing in the mark does not have any meaning as an acronym or abbreviation.

Significance of wording, letter(s), or numeral(s)
COLORSHIELD appearing in the mark has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Dana S. Gross/     Date: 07/20/2010
Signatory's Name: Dana S. Gross, DC Bar member
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: 77846780
Internet Transmission Date: Tue Jul 20 17:15:27 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201007201715276432
39-77846780-470cb0eab8b1c6d0c18aaadeb7a5
2b7d79-N/A-N/A-20100720170646137941