| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 78154464 |
| MARK SECTION (no change) | |
| GOODS AND/OR SERVICES SECTION (1st class)(current) | |
| INTERNATIONAL CLASS | 017 |
| DESCRIPTION | |
| Building materials, namely, waterproofing membranes and vapor barriers in sheet form comprising a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings located between adhesive layer and liner for cutting the releasable sheet liner into smaller portions for selective removal to expose portions of the adhesive layer for installation onto a building surface or civil engineering surface | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (1st class)(proposed) | |
| INTERNATIONAL CLASS | 017 |
| DESCRIPTION | |
| Building materials, namely, waterproofing membranes and vapor barriers featuring a preformed adhesive layer to insulate a building surface from moisture or vapor, a releasable sheet liner, and string or strings between the adhesive layer and liner used to expose portions of the adhesive layer for installation | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (2nd class)(current) | |
| INTERNATIONAL CLASS | 019 |
| DESCRIPTION | |
| Building materials, namely, waterproofing membranes and vapor barriers comprising a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings located between adhesive layer and liner for cutting the releasable sheet liner into smaller portions for selective removal to expose portions of the adhesive layer for installation onto a building surface or civil engineering surface | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (2nd class)(proposed) | |
| INTERNATIONAL CLASS | 019 |
| DESCRIPTION | |
| Building materials, namely, preformed waterproofing membranes and vapor barrriers featuring a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings between the adhesive layer and liner used to expose portions of the waterproofing adhesive layer for installation | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The Examining Attorney's proposed changes with respect to the goods in International Class 17 is helpful. Applicant adopts substantially the entire portion of the wording suggested by the Examiner, but instead of describing "insulating waterproofing membranes and vapor barriers," Applicant instead describes "waterproofing membranes and vapor barriers featuring a preformed adhesive layer for insulating a building surface from moisture or vapor...". This change is needed to clarify that the purpose of the insulative barrier is waterproofing rather than thermally protective in nature. With regard to the Examining Attorney's statement that the goods would belong in International Class 17 only, the Applicant requests that the Examiner reconsider the conclusion that International Class 19 is not applicable. Applicant points out that its prior registrations of trademarks for similar waterproofing membrane goods have historically been registered by the USPTO in International Class 19, see e.g.,: BITUTHENE (Reg. Nos. 1404958 and 868344); FLORPRUFE (Reg. No. 2748871); ICE & WATER SHIELD (Reg. No. 1669464); PREPRUFE (Reg. No. 2122217); VYCOR (Reg. No. 2184659); VYCOR BASIK (Reg. No. 2515767). These federal registrations in Class 19 pertain to waterproofing membranes having preformed adhesive layers and releasable sheet liners for installation on building surfaces. These are classic building materials that are installed upon, and become integrally part of, the building or construction surface upon which they are applied. If the Examiner for some reason continues to disallow registration in Class 19, then he is authorized to proceed with the Class 17 registration only. Applicant does not understand, however, the basis for denying registration in Class 19 in view of the fact that the goods are historically considered to be building materials. Applicant notes that a Notice of Allowance for RIPCORD (Serial No. 78147299) was issued for both Classes 17 and 19. |
| SIGNATURE SECTION | |
| SIGNATURE | /Craig K. Leon/ |
| SIGNATORY NAME | Craig K. Leon |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 06/16/2004 |
| SIGNATURE | /Craig K. Leon/ |
| SIGNATORY NAME | Craig K. Leon |
| SIGNATORY POSITION | Patent Counsel |
| SIGNATORY DATE | 06/16/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 16 14:20:23 EDT 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200406 16142023500092-78154464-2 0023da9988b995a0a24165877 4215e32c3-N-N-20040616140 003406418 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 78154464 is amended as follows: | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 017 for Building materials, namely, waterproofing membranes and vapor barriers in sheet form comprising a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings located between adhesive layer and liner for cutting the releasable sheet liner into smaller portions for selective removal to expose portions of the adhesive layer for installation onto a building surface or civil engineering surface | |
| Original Filing Basis: 1(b). | |
| Proposed: Class 017 for Building materials, namely, waterproofing membranes and vapor barriers featuring a preformed adhesive layer to insulate a building surface from moisture or vapor, a releasable sheet liner, and string or strings between the adhesive layer and liner used to expose portions of the adhesive layer for installation | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 019 for Building materials, namely, waterproofing membranes and vapor barriers comprising a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings located between adhesive layer and liner for cutting the releasable sheet liner into smaller portions for selective removal to expose portions of the adhesive layer for installation onto a building surface or civil engineering surface | |
| Original Filing Basis: 1(b). | |
| Proposed: Class 019 for Building materials, namely, preformed waterproofing membranes and vapor barrriers featuring a preformed waterproofing adhesive layer, releasable sheet liner, and string or strings between the adhesive layer and liner used to expose portions of the waterproofing adhesive layer for installation | |
| Additional Statements | |
| The Examining Attorney's proposed changes with respect to the goods in International Class 17 is helpful. Applicant adopts substantially the entire portion of the wording suggested by the Examiner, but instead of describing "insulating waterproofing membranes and vapor barriers," Applicant instead describes "waterproofing membranes and vapor barriers featuring a preformed adhesive layer for insulating a building surface from moisture or vapor...". This change is needed to clarify that the purpose of the insulative barrier is waterproofing rather than thermally protective in nature. With regard to the Examining Attorney's statement that the goods would belong in International Class 17 only, the Applicant requests that the Examiner reconsider the conclusion that International Class 19 is not applicable. Applicant points out that its prior registrations of trademarks for similar waterproofing membrane goods have historically been registered by the USPTO in International Class 19, see e.g.,: BITUTHENE (Reg. Nos. 1404958 and 868344); FLORPRUFE (Reg. No. 2748871); ICE & WATER SHIELD (Reg. No. 1669464); PREPRUFE (Reg. No. 2122217); VYCOR (Reg. No. 2184659); VYCOR BASIK (Reg. No. 2515767). These federal registrations in Class 19 pertain to waterproofing membranes having preformed adhesive layers and releasable sheet liners for installation on building surfaces. These are classic building materials that are installed upon, and become integrally part of, the building or construction surface upon which they are applied. If the Examiner for some reason continues to disallow registration in Class 19, then he is authorized to proceed with the Class 17 registration only. Applicant does not understand, however, the basis for denying registration in Class 19 in view of the fact that the goods are historically considered to be building materials. Applicant notes that a Notice of Allowance for RIPCORD (Serial No. 78147299) was issued for both Classes 17 and 19. | |
| Declaration Signature |
|
| 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. Section 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 amendment/response on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in connection with the goods and/or services listed in the application; 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 and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true as set forth within the original application and/or the submitted amendment/response. | |
| Signature: /Craig K. Leon/ Date: 06/16/2004 | |
| Signatory's Name: Craig K. Leon | |
| Signatory's Position: Attorney | |
| Response Signature | |
| Signature: /Craig K. Leon/ Date: 06/16/2004 | |
| Signatory's Name: Craig K. Leon | |
| Signatory's Position: Patent Counsel | |
| Serial Number: 78154464 | |
| Internet Transmission Date: Wed Jun 16 14:20:23 EDT 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20040616142023500092- 78154464-20023da9988b995a0a241658774215e 32c3-N-N-20040616140003406418 |