Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79127811 SOLARIS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79127811) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Epoxy coatings (other than paint); polypropylene resins; polypropylene coatings (other than paint); polyurethane; polyurethane coatings (other than paint); polyolefin; polyolefin coatings (other than paint); coatings (not in the nature of paint) for pipelines
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Epoxy coatings (other than paint); waterproofing chemical compositions, namely, epoxy coatings other than paint, polypropylene coatings other than paint, polyurethane coatings other than paint, polyolefin coatings other than paint and coatings not in the nature of paint for pipelines; polypropylene resins; polypropylene coatings (other than paint); polyurethane; polyolefin; polyurethane coatings (other than paint); polyolefin coatings (other than paint); coatings (not in the nature of paint) for pipelinesClass 001 for waterproofing chemical compositions, namely, epoxy coatings other than paint, polypropylene coatings other than paint, polyurethane coatings other than paint, polyolefin coatings other than paint and coatings not in the nature of paint for pipelines; polypropylene resins; polyurethane; polyolefin

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for Coatings (in the nature of paint) for pipelines
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Coatings (in the nature of paint) for pipelines; Coatings in the nature of paint for pipelinesClass 002 for Coatings in the nature of paint for pipelines

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Pipelines (of metal); high-pressure pipelines (of metal); manifolds of metal for pipelines; pipes (of metal); parts and fittings for pipes or for pipelines; joints for pipes (of metal)
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Pipelines (of metal); Pipelines of metal, namely, pipelines for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; high-pressure pipelines (of metal); high pressure pipelines of metal for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; manifolds of metal for pipelines; pipes (of metal); metal pipes for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; parts and fittings for pipes or for pipelines; joints for pipes (of metal); metal joints for pipesClass 006 for Pipelines of metal, namely, pipelines for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; high pressure pipelines of metal for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; manifolds of metal for pipelines; metal pipes for use in the petro chemical, nuclear, refinery oil, liquid natural gas and compressed natural gas industry; parts and fittings for pipes or for pipelines; metal joints for pipes

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Welding apparatus; welding machines; apparatus and machines for use in welding; apparatus, instruments and machines for use in radiant heat welding; radiant heat welding apparatus; machines and machine tools for use in the laying of pipelines; machines and machine tools for use in the manufacture of pipes or of pipelines; radiant heat welding apparatus; parts and fittings for all of the aforesaid
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Welding apparatus; Welding apparatus, welding machines, and apparatus and machines for use in welding; welding machines; namely, internal pipeline welders, external pipeline welders, internal and external pipeline weld inspection systems; apparatus and machines for use in welding; internal lineup clamps, internal pneumatic line-up and copper backup clamps, external welding clamps for supporting automatic external welding systems, and vision controlled hydraulic, pneumatic and motorized inspection systems; apparatus, instruments and machines for use in radiant heat welding; motorized internal clamps; radiant heat welding apparatus; machines and machine tools for use in the laying of pipelines; namely, pipe bending machines such as hydraulic or pneumatic or motorized benders, hydraulic and pneumatic and motorized mandrels; machines and machine tools for use in the manufacture of pipes or of pipelines; pipeline construction supports such as conveyors and rollers, bending sets and dies for accommodating various pipe sizes in a bender, compressors, pipe handling cradles, vehicle mounted back end rings, remote-controlled self-loading padders and in-trench pushers, motorized pipe endprep equipment; radiant heat welding apparatus; machines and machine tools for use in manufacture of pipes or pipelines; parts and fittings for all of the aforesaid; namely, pipe conveying systems, double jointing machines, automatic welding counterbore pipe facing machines, automatic pipe edge measurement systems, hydraulic power generating units, control systems for monitoring pipe routing, control systems and equipment for blast cleaning, coating removal, priming, coating, or tape wrapping of pipe, pipe conveyors, pipe ejectors for removing or introducing pipe from or into a an assembly path, motor control centers for operating motorized equipment, automatic pusher racks, wheeled skew conveyors, hydraulic, pneumatic, or motorized turning rollers for inspection cleaning or applying coatings, rollers conveyors, end prep support units, pipe transfer carriages, pipe track type line-up modules; parts, fittings and automatic control for all of the aforesaid.Class 007 for Welding apparatus, welding machines, and apparatus and machines for use in welding; namely, internal pipeline welders, external pipeline welders, internal and external pipeline weld inspection systems; internal lineup clamps, internal pneumatic line-up and copper backup clamps, external welding clamps for supporting automatic external welding systems, and vision controlled hydraulic, pneumatic and motorized inspection systems; motorized internal clamps; machines and machine tools for use in the laying of pipelines; namely, pipe bending machines such as hydraulic or pneumatic or motorized benders, hydraulic and pneumatic and motorized mandrels; pipeline construction supports such as conveyors and rollers, bending sets and dies for accommodating various pipe sizes in a bender, compressors, pipe handling cradles, vehicle mounted back end rings, remote-controlled self-loading padders and in-trench pushers, motorized pipe endprep equipment; machines and machine tools for use in manufacture of pipes or pipelines; namely, pipe conveying systems, double jointing machines, automatic welding counterbore pipe facing machines, automatic pipe edge measurement systems, hydraulic power generating units, control systems for monitoring pipe routing, control systems and equipment for blast cleaning, coating removal, priming, coating, or tape wrapping of pipe, pipe conveyors, pipe ejectors for removing or introducing pipe from or into a an assembly path, motor control centers for operating motorized equipment, automatic pusher racks, wheeled skew conveyors, hydraulic, pneumatic, or motorized turning rollers for inspection cleaning or applying coatings, rollers conveyors, end prep support units, pipe transfer carriages, pipe track type line-up modules; parts, fittings and automatic control for all of the aforesaid.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Construction of pipelines; installation of pipelines; laying of pipelines; installation of linings in pipelines; insulation of pipelines; maintenance and repair of pipelines; maintenance and repair of pipeline systems; pipeline insulation; coating of pipes; coating of pipelines
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Construction of pipelines; installation of pipelines; laying of pipelines; installation of linings in pipelines; insulation of pipelines; installation of insulation of pipelines; maintenance and repair of pipelines; maintenance and repair of pipeline systems; pipeline insulation; installation of pipeline insulation; coating of pipes; application of protective coatings for pipes; coating of pipelines; application of protective coatings for pipelinesClass 037 for Construction of pipelines; installation of pipelines; laying of pipelines; installation of linings in pipelines; installation of insulation of pipelines; maintenance and repair of pipelines; maintenance and repair of pipeline systems; installation of pipeline insulation; application of protective coatings for pipes; application of protective coatings for pipelines

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Welding services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed: Class 040 for Welding services

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design of pipelines; pipeline inspection services; research in the field of pipelines; research in the field of welding
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Design of pipelines; pipeline inspection services; research in the field of pipelines; namely, pipeline design efficiency, pipeline construction efficiency and computer aided pipeline design; research in the field of welding; namely, welding quality control and welding inspection technology.Class 042 for Design of pipelines; pipeline inspection services; research in the field of pipelines; namely, pipeline design efficiency, pipeline construction efficiency and computer aided pipeline design; research in the field of welding; namely, welding quality control and welding inspection technology.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Kofi Schulterbrandt of Stanley Black & Decker/Pipeline Inductio, having an address of
Patent Dept., TW199 701 East Joppa Road Towson, Maryland 21286
United States
Kofi.schulterbrandt@sbdinc.com
410 716 2881
410 716 2610
The attorney docket/reference number is KAS/31098/CRC/tmamend/smh .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Proposed:
Kofi Schulterbrandt of Stanley Black & Decker/Pipeline Inductio, having an address of
Patent Dept., TW199 701 East Joppa Road Towson, Maryland 21286
United States
Kofi.schulterbrandt@sbdinc.com;sue.haslbeck@sbdinc.com
410 716 2881
410 716 2610
The docket/reference number is KAS/31098/CRC/tmamend/smh .



ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
SOLARIS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance. The word(s) SOLARIS has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Kofi Schulterbrandt/     Date: 10/16/2013
Signatory's Name: Kofi Schulterbrandt
Signatory's Position: Senior Group Patent Counsel

Signatory's Phone Number: 4107162881

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.

Mailing Address:    Kofi Schulterbrandt
   Stanley Black & Decker/Pipeline Inductio
   Patent Dept., TW199
   701 East Joppa Road
   Towson, Maryland 21286
        
Serial Number: 79127811
Internet Transmission Date: Wed Oct 16 16:57:11 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2013101616571117
0432-79127811-50027a802b69dfcc16cae818f8
9f4ea67e5395c393779af01842e0af753616b715
-N/A-N/A-20131016161344735337