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. 79135640 THUNDERBOLT(Standard Characters, see http://uspto.report/TM/79135640/mark.png) has been amended as follows:

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

The significant amendment to the goods recited in Applicant's application should resolve the Sec. 2(d) refusal. Applicant's goods are now limited to "mining equipment, namely, recoilless impact hammers; accessories for power-operated impact hammers and recoilless hammers used in mining, namely, attachments to impact hammers and recoilless hammers." Cited Registration No. 2008972 is registered in connection with "drills and drill bits for use with power operated tools" in Class 7. As such, the goods associated with the mark in the cited registration and Applicant's application are not closely related. Accordingly, consumers are not likely to be confused as to the source of the goods associated with the respective marks. As further evidence of the above conclusion, Cited Reg. No. 3790172 for the mark THUNDERBOLT is owned by Applicant and was applied for and registered after the above-cited registration in connection with "mining equipment, namely, a recoilless impact hammer". The goods in Applicant's current application, as amended, are the same and accessories for the goods recited in Cited Reg. No. 3790172, yet the above cited THUNDERBOLT registration was not cited as block to the registration of Applicant's THUNDERBOLT mark in Reg. No. 3790172. Moreover, based on amendments to the goods identical to those herein, the PTO's refusal to register Applicant's Application Ser. No. 79129993 for the identical mark THUNDERBOLT (stylized) based on the same cited registration herein, namely, Reg. No. 2008972, has been withdrawn. Accordingly, Applicant respectfully requests that the cited registration be withdrawn as an obstacle to registration and its application be passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 008 for Hand tools (hand operated) for use in mining; guides being for use with hand operated tools

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Recoilless impact hammer; underground mining and tunnelling equipment, being rock drilling and bolting equipment; quarry and mining machines and machine tools; mineral processing machinery and ancillary equipment; apparatus for use in mining; mining machines; tools and accessories for mining machines; mining and mineral tools; machines for drilling (mechanical)
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: Recoilless impact hammer; Mining equipment, namely, recoilless impact hammers; underground mining and tunnelling equipment, being rock drilling and bolting equipment; accessories for power-operated impact hammers and recoilless hammers used in mining, namely, attachments to impact hammers and recoilless hammers; quarry and mining machines and machine tools; mineral processing machinery and ancillary equipment; apparatus for use in mining; mining machines; tools and accessories for mining machines; mining and mineral tools; machines for drilling (mechanical)Class 007 for Mining equipment, namely, recoilless impact hammers; accessories for power-operated impact hammers and recoilless hammers used in mining, namely, attachments to impact hammers and recoilless hammers

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.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
McCullough Robertson
Level 11,
Central Plaza Two,
BRISBANE QLD 4000
AU

Proposed:
James R. Robinson of Robinson Law Office, PLLC, having an address of
1715 Ashland Street Houston, Texas 77008
United States
jrobinson@robinsonlawpllc.com
713-203-2146
713-513-5134



ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3790172 and 4103601.


SIGNATURE(S)
Response Signature
Signature: /James R.Robinson/     Date: 04/28/2014
Signatory's Name: James R. Robinson
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 713-203-2146

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:    James R. Robinson
   Robinson Law Office, PLLC
   1715 Ashland Street
   Houston, Texas 77008
        
Serial Number: 79135640
Internet Transmission Date: Mon Apr 28 16:38:17 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20140428163817
178753-79135640-50016c26929bf88e8edb1de2
8687033d58d2463acf7cc0d414d7a6986a0e8e13
7-N/A-N/A-20140428163205408916