TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

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

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 79154603 UNITOR (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/79154603/large) has been amended as follows:

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

The Examining Attorney has continued and made final the requirement for an acceptable description of goods and services for Classes 6, 8, 9, 11, and 36.  As required, Applicant has amended the description of goods and services in those classes to render certain objectionable language more definite.  As discussed below, Applicant has also amended the Class 3 description to further distinguish these goods from those covered by the cited registrations.  Applicant submits that all of the amended descriptions are sufficiently definite for purposes of registration.

 

The Examining Attorney has also continued and made final the refusal of registration under Section 2(d), as to “cleaning, polishing, scouring, degreasing and abrasive preparations” in Class 3 only, based on Registration Nos. 2623873 for the mark UNITERS and 2623874 for the mark UNITERS & Design.  The Examining Attorney contends that Applicant’s goods are not limited by nature, type, channels of trade, or classes of purchasers, and thus must be presumed to travel in all normal channels of trade and to be available to all classes of purchasers.  Thus, the Examining Attorney reasons, Applicant’s cleaning preparations could include those used to clean leather, as identified in the cited registrations.

 

Applicant respectfully requests reconsideration and withdrawal of the Section 2(d) refusal in light of the amendments to the Class 3 description entered herein.  Specifically, Applicant has amended its Class 3 description to specify that its cleaning preparations are for use in the offshore, marine and/or maritime industry, or for personal use:

 

Bleaching preparations and other substances for laundry use, namely, laundry bleach, laundry detergents, laundry soaps, laundry fabric conditioners and laundry starches; cleaning, polishing, scouring, degreasing and abrasive preparations for use on board boats and ships or in the offshore, marine and/or maritime industry; cleaning preparations for personal use; paint and rust removing preparations; industrial abrasives for use in offshore, marine and/or maritime industry; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; polishing paper, abrasive paper, grinding paper.

 

As noted above, the cited registrations identify creams and waxes for the care and cleaning of leather and hides.  It is now clear from Applicant’s amended Class 3 description that its goods are completely unrelated to the registrant’s goods and, as such, the refusal of registration under Section 2(d) should be withdrawn.

 

In view of the foregoing actions and arguments, Applicant submits that the application is now in condition for approval for publication of the mark.  If additional questions remain, however, the Examining Attorney is invited to contact the undersigned by telephone at 404-653-6440.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Bleaching preparations and other substances for laundry use, namely, laundry bleach, laundry detergents, laundry soaps, laundry fabric conditioners and laundry starches; cleaning, polishing, scouring, degreasing and abrasive preparations; paint and rust removing preparations; industrial abrasives for use in offshore, marine and/or maritime industry; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; polishing paper, abrasive paper, grinding paper
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: Bleaching preparations and other substances for laundry use, namely, laundry bleach, laundry detergents, laundry soaps, laundry fabric conditioners and laundry starches; cleaning, polishing, scouring, degreasing and abrasive preparations; cleaning, polishing, scouring, degreasing and abrasive preparations for use on board boats and ships or in the offshore, marine and/or maritime industry; cleaning preparations for personal use; paint and rust removing preparations; industrial abrasives for use in offshore, marine and/or maritime industry; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; polishing paper, abrasive paper, grinding paperClass 003 for Bleaching preparations and other substances for laundry use, namely, laundry bleach, laundry detergents, laundry soaps, laundry fabric conditioners and laundry starches; cleaning, polishing, scouring, degreasing and abrasive preparations for use on board boats and ships or in the offshore, marine and/or maritime industry; cleaning preparations for personal use; paint and rust removing preparations; industrial abrasives for use in offshore, marine and/or maritime industry; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; polishing paper, abrasive paper, grinding paper

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 Common metals and their alloys, unwrought or semi-wrought; metal building materials, namely, soffits; transportable buildings of metal; small items of metal hardware; pipes and tubes of metal; goods of common metal not included in other classes, namely, metal hose fittings, metal pipe fittings, metal joinery fittings and metal couplings for fire hoses; gas containers for compressed gas; consumables for welding, including metal welding rods and wires; parts and fittings for refrigerators, namely, spare components for refrigeration systems; metal ores; parts and fittings for all the aforementioned goods
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: Common metals and their alloys, unwrought or semi-wrought; metal building materials, namely, soffits; transportable buildings of metal; small items of metal hardware; small items of metal hardware, namely, nuts, bolts, pulleys and karabiners of metal; pipes and tubes of metal; goods of common metal not included in other classes, namely, metal hose fittings, metal pipe fittings, metal joinery fittings and metal couplings for fire hoses; gas containers for compressed gas; metal gas containers for compressed gas; consumables for welding, including metal welding rods and wires; parts and fittings for refrigerators, namely, spare components for refrigeration systems; parts and fittings for refrigerators, namely, spare components for refrigeration systems in the nature of pipes; metal ores; parts and fittings for all the aforementioned goodsClass 006 for Common metals and their alloys, unwrought or semi-wrought; metal building materials, namely, soffits; transportable buildings of metal; small items of metal hardware, namely, nuts, bolts, pulleys and karabiners of metal; pipes and tubes of metal; goods of common metal not included in other classes, namely, metal hose fittings, metal pipe fittings, metal joinery fittings and metal couplings for fire hoses; metal gas containers for compressed gas; consumables for welding, including metal welding rods and wires; parts and fittings for refrigerators, namely, spare components for refrigeration systems in the nature of pipes; metal ores; parts and fittings for all the aforementioned goods

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 008 for Hand tools and implements that are hand operated, namely, non-electric welding apparatus and welding tools, hammers, spanners, pliers, drills, hand saws and cutting tools; fire and escape related hand tools, namely, hammers, hand saws and cutting tools; parts and fittings for all the aforementioned goods
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: Hand tools and implements that are hand operated, namely, non-electric welding apparatus and welding tools, hammers, spanners, pliers, drills, hand saws and cutting tools; Hand tools and implements that are hand operated, namely, hammers, scrapers, saws and cutting tools; fire and escape related hand tools, namely, hammers, hand saws and cutting tools; parts and fittings for all the aforementioned goodsClass 008 for Hand tools and implements that are hand operated, namely, hammers, scrapers, saws and cutting tools; fire and escape related hand tools, namely, hammers, hand saws and cutting tools; parts and fittings for all the aforementioned goods

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 009 for Scientific, nautical, surveying, photographic, optical, weighing, measuring, signaling, checking and supervision, lifesaving and teaching apparatus and instruments, namely, life boats, signaling buoys, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording of sound, images and data; software; fire-extinguishing apparatus and installations; fire suppression apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; fire prevention apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; firefighting apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, stickers, cabinets for fire extinguishers, fire hose nozzles, fire hoses and fire blankets; safety apparatus, installations and equipment, namely, inflatable flotation devices; self-rescue breathing apparatus, namely, oxygen breathing units and underwater breathing apparatus; detection and alarm apparatus, systems and installations, namely, fire detectors, smoke detectors and gas detectors; fire alarm and emergency evacuation devices, namely, fire alarm control panels, smoke detectors, heat detectors, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns and speakers; lifesaving equipment, namely, life boats, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; protective clothing, namely, clothing for protection against accidents, chemicals, irradiation and fire; electrical installation materials; parts and fittings for all the aforementioned goods
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: Scientific, nautical, surveying, photographic, optical, weighing, measuring, signaling, checking and supervision, lifesaving and teaching apparatus and instruments, namely, life boats, signaling buoys, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording of sound, images and data; software; computer software for use on boats and ships or in the marine, maritime or offshore industry, for collecting process data and/or improving or controlling functionality of installations and systems for boiler water treatment, cooling water treatment, heavy fuel oil treatment, diesel oil treatment, deck, engine and accommodation cleaning chemicals and equipment or tank and cargo hold cleaning chemicals and equipment, refrigeration leakage and consumption, central gas consumption, welding power and welding consumable consumption and gas/refrigerant cylinder tracking and tracing; fire-extinguishing apparatus and installations; fire suppression apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; fire prevention apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; firefighting apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, stickers, cabinets for fire extinguishers, fire hose nozzles, fire hoses and fire blankets; safety apparatus, installations and equipment, namely, inflatable flotation devices; self-rescue breathing apparatus, namely, oxygen breathing units and underwater breathing apparatus; detection and alarm apparatus, systems and installations, namely, fire detectors, smoke detectors and gas detectors; fire alarm and emergency evacuation devices, namely, fire alarm control panels, smoke detectors, heat detectors, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns and speakers; lifesaving equipment, namely, life boats, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; protective clothing, namely, clothing for protection against accidents, chemicals, irradiation and fire; electrical installation materials; parts and fittings for all the aforementioned goodsClass 009 for Scientific, nautical, surveying, photographic, optical, weighing, measuring, signaling, checking and supervision, lifesaving and teaching apparatus and instruments, namely, life boats, signaling buoys, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording of sound, images and data; computer software for use on boats and ships or in the marine, maritime or offshore industry, for collecting process data and/or improving or controlling functionality of installations and systems for boiler water treatment, cooling water treatment, heavy fuel oil treatment, diesel oil treatment, deck, engine and accommodation cleaning chemicals and equipment or tank and cargo hold cleaning chemicals and equipment, refrigeration leakage and consumption, central gas consumption, welding power and welding consumable consumption and gas/refrigerant cylinder tracking and tracing; fire-extinguishing apparatus and installations; fire suppression apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; fire prevention apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases, mounting straps, pull cables, nozzles, fittings, tubing and stickers; firefighting apparatus, systems and installations for use in marine vehicles and offshore installations, comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, stickers, cabinets for fire extinguishers, fire hose nozzles, fire hoses and fire blankets; safety apparatus, installations and equipment, namely, inflatable flotation devices; self-rescue breathing apparatus, namely, oxygen breathing units and underwater breathing apparatus; detection and alarm apparatus, systems and installations, namely, fire detectors, smoke detectors and gas detectors; fire alarm and emergency evacuation devices, namely, fire alarm control panels, smoke detectors, heat detectors, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns and speakers; lifesaving equipment, namely, life boats, lifesaving rafts, life nets, life belts, life vests, life jackets and life buoys; protective clothing, namely, clothing for protection against accidents, chemicals, irradiation and fire; electrical installation materials; parts and fittings for all the aforementioned goods

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 011 for Lighting apparatus, devices and installations for marine and offshore installations in cargo, machinery and accommodation areas; heating installations, heating elements; heating apparatus for cargo, machinery, accommodation and deck areas for marine and offshore installations; heating devices, namely, electrical devices to be plugged into wall outlets having a heating element; apparatus, devices and installations for refrigerating, namely, refrigerating appliances and installations, refrigerators, chillers, refrigerating cabinets, refrigerated shipping containers and refrigerating machines; apparatus, devices and installations for drying and/or ventilating, namely, industrial dryers for heating and dehumidifying, ventilating fans for commercial and industrial use, evaporators, condensers, rechargeable core dryers and liquid line dryers; apparatus, devices and installations for water supply, including drinking water coolers; apparatus, devices and installations for air conditioning, namely, air conditioning apparatus and installations, and package air conditioning units; air conditioning, air cooling and ventilation apparatus and instruments; freezer storage chambers; containers and installations, namely, freezers and freezer cabinets; refrigerator cores, thermostats, thermometers, thermostatic expansion valves, pressure controls for use in refrigeration systems, portable refrigerant recovery stations, cycle packs, flares and air conditioning fittings; parts and fittings for all the aforementioned goods
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: Lighting apparatus, devices and installations for marine and offshore installations in cargo, machinery and accommodation areas; heating installations, heating elements; heating apparatus for cargo, machinery, accommodation and deck areas for marine and offshore installations; heating apparatus, namely, heat generators, for cargo, machinery, accommodation and deck areas for marine and offshore installations; heating devices, namely, electrical devices to be plugged into wall outlets having a heating element; apparatus, devices and installations for refrigerating, namely, refrigerating appliances and installations, refrigerators, chillers, refrigerating cabinets, refrigerated shipping containers and refrigerating machines; apparatus, devices and installations for drying and/or ventilating, namely, industrial dryers for heating and dehumidifying, ventilating fans for commercial and industrial use, evaporators, condensers, rechargeable core dryers and liquid line dryers; apparatus, devices and installations for drying and/or ventilating, namely, industrial dryers for heating and dehumidifying, ventilating fans for commercial and industrial use, evaporators, refrigerator condensers, rechargeable core dryers and liquid line dryers; apparatus, devices and installations for water supply, including drinking water coolers; apparatus, devices and installations for water supply, namely, water coolers and water conditioning units; apparatus, devices and installations for air conditioning, namely, air conditioning apparatus and installations, and package air conditioning units; air conditioning, air cooling and ventilation apparatus and instruments; freezer storage chambers; containers and installations, namely, freezers and freezer cabinets; refrigerator cores, thermostats, thermometers, thermostatic expansion valves, pressure controls for use in refrigeration systems, portable refrigerant recovery stations, cycle packs, flares and air conditioning fittings; refrigerator cores, thermostatic expansion valves, pressure controls for use in refrigeration systems, portable refrigerant recovery stations, air conditioning cycle packs, flares and air conditioning fittings; parts and fittings for all the aforementioned goodsClass 011 for Lighting apparatus, devices and installations for marine and offshore installations in cargo, machinery and accommodation areas; heating installations, heating elements; heating apparatus, namely, heat generators, for cargo, machinery, accommodation and deck areas for marine and offshore installations; heating devices, namely, electrical devices to be plugged into wall outlets having a heating element; apparatus, devices and installations for refrigerating, namely, refrigerating appliances and installations, refrigerators, chillers, refrigerating cabinets, refrigerated shipping containers and refrigerating machines; apparatus, devices and installations for drying and/or ventilating, namely, industrial dryers for heating and dehumidifying, ventilating fans for commercial and industrial use, evaporators, refrigerator condensers, rechargeable core dryers and liquid line dryers; apparatus, devices and installations for water supply, namely, water coolers and water conditioning units; apparatus, devices and installations for air conditioning, namely, air conditioning apparatus and installations, and package air conditioning units; air conditioning, air cooling and ventilation apparatus and instruments; freezer storage chambers; containers and installations, namely, freezers and freezer cabinets; refrigerator cores, thermostatic expansion valves, pressure controls for use in refrigeration systems, portable refrigerant recovery stations, air conditioning cycle packs, flares and air conditioning fittings; parts and fittings for all the aforementioned goods

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 036 for Services provided by shipping agencies, namely, prospecting and conclusion of vessel and freight insurance for ship owners; dealing with shipping formalities relating to customs, port, passport and health services; insurance services; insurance brokerage; insurance agency services; underwriting services; re-insurance services; loss assessment services; loss adjustment services; debt factoring; customs brokerage, customs clearance of cargo; information and consultancy related to all the aforementioned 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:
Tracked Text Description: Services provided by shipping agencies, namely, prospecting and conclusion of vessel and freight insurance for ship owners; Services provided by shipping agencies, namely, prospecting and conclusion of vessel and freight insurance for ship owners, namely, assessing insurance claims; dealing with shipping formalities relating to customs, port, passport and health services; insurance services; insurance administration services; insurance brokerage; insurance agency services; underwriting services; re-insurance services; loss assessment services; financial consulting, namely, loss assessment services; loss adjustment services; loss adjustment services, namely claims adjustment in the field of insurance; debt factoring; customs brokerage, customs clearance of cargo; information and consultancy related to all the aforementioned servicesClass 036 for Services provided by shipping agencies, namely, prospecting and conclusion of vessel and freight insurance for ship owners, namely, assessing insurance claims; dealing with shipping formalities relating to customs, port, passport and health services; insurance administration services; insurance brokerage; insurance agency services; underwriting services; re-insurance services; financial consulting, namely, loss assessment services; loss adjustment services, namely claims adjustment in the field of insurance; debt factoring; customs brokerage, customs clearance of cargo; information and consultancy related to all the aforementioned 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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Christie Baty Hudgins/     Date: 12/08/2015
Signatory's Name: Christie Baty Hudgins
Signatory's Position: Attorney of Record, Georgia Bar Member

Signatory's Phone Number: 404-653-6440

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 79154603
Internet Transmission Date: Tue Dec 08 10:01:52 EST 2015
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2015120810015200
2055-79154603-550442edf827c1391b3941a177
37d3ebc2757185dbbb5bc4998963bfad58c4edc0
-N/A-N/A-20151208095548225732