Response to Office Action

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 1957 (Rev 10/2011)

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

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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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79180420 BILSTEIN (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/79180420/large) has been amended as follows:

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

This Response is in reply to the Office Action received in reference to the above application.  Applicant has carefully considered the remarks of the Examining Attorney and responds as follows.

As an initial matter, Applicant amends its goods descriptions as follows:

Class 7: Shock absorber plungers or pistons; shock absorbers for machines and for industrial applications like buildings and bridges, adjustable shock absorbers, electronic shock absorbers

Class 12: Parts for motor vehicles and motorsports vehicles, namely automobile wheel suspensions, automotive suspension springs and stabilizers, stabilizer brackets, damping systems, suspension valves, suspension valve shims and blocks, valve caps, valve inlets, valve seatings, steering dampers and stabilizers, steering stabilizer shocks, steering racks, steering knuckles, air suspension systems, air compressors, coilover suspensions and coilover suspension dampers, height adjustable chassis and landing gears, damper tubes, springs and spring plates, gas pressured springs, leaf springs, overload springs, spring cabs, spring isolators, spring seats, pistons, dividing pistons, piston rods, piston seals, linking rods, dust boots and dust covers, bump stops, oil, air and gas reservoirs and reservoir tubes, head bearings, adjustment assemblies, adjustment discs, adjustment knobs, adjustment rings, adjustment screws, adjustment wheels and adjustment wheel housings; hydraulic units for motor vehicles in the form of shock absorbing and/or stabilising elements for chassis and chassis superstructures of motor vehicles and armoured vehicles; vibration dampers for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; suspension struts, included in class 12; suspension struts for vehicles, in particular air suspension struts; combined spring/damper modules for wheel suspensions for vehicles; MacPherson suspension struts for land vehicles; suspension struts with steel springs or air springs or air spring modules for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; gas filled shock absorbers, adjustable and non-adjustable hydraulic shock absorbers, mono-tube gas pressure shock absorbers, twin-tube hydraulic and gas pressure shock absorbers, adjustable and non-adjustable gas-lift shock absorbers, hydro-pneumatic shock absorbers for motor vehicles; support bearings for motor vehicle vibration dampers; springs for wheel suspensions of motor vehicles, in particular helical compression springs, air springs, air spring modules, single air springs

Class 17: Buffers of rubber, in particular in the form of individual parts and attachments for vibration dampers and suspension struts, namely rubber wheel chocks, elastomeric bearings, rubber bearing inserts, cuffs, for wheel suspensions of motor vehicles

Secondly, Applicant states that the colors black, white, blue and yellow are claimed as a feature of the mark, and describes the mark as follows:

The mark consists of the word “BILSTEIN” in white within a blue rectangular background.  To the right of the rectangle is a yellow circle outlined in black with a design of a cutaway of a shock absorber in black and white.

Applicant trusts this Response will address the Examining Attorney’s concerns.

Respectfully submitted,

 

THE WEBB LAW FIRM

/crd/

Cecilia R. Dickson
Attorney of Record, PA Bar Member

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Shock absorber plungers; shock absorbers for machines
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: Shock absorber plungers; Shock absorber plungers or pistons; shock absorbers for machines; shock absorbers for machines and for industrial applications like buildings and bridges, adjustable shock absorbers, electronic shock absorbersClass 007 for Shock absorber plungers or pistons; shock absorbers for machines and for industrial applications like buildings and bridges, adjustable shock absorbers, electronic shock absorbers

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 012 for Parts for motor vehicles, included in this class; hydraulic units for motor vehicles in the form of shock-absorbing and/or stabilising elements for chassis and chassis superstructures of motor vehicles; vibration dampers for wheel suspensions of motor vehicles, and individual parts and attachments therefor, included in this class; suspension struts, included in this class; suspension struts for vehicles, in particular air suspension struts; combined spring/damper modules for vehicles; MacPherson suspension struts for land vehicles; suspension struts with steel springs or air springs for wheel suspensions of motor vehicles, and individual parts and attachments therefor, included in this class; gas-filled shock absorbers, in particular hydropneumatic shock absorbers for motor vehicles and for use as machine parts, included in this class; support bearings for motor vehicle vibration dampers; springs for wheel suspensions of motor vehicles, in particular helical compression springs, air springs, single air springs
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: Parts for motor vehicles, included in this class; Parts for motor vehicles and motorsports vehicles, namely automobile wheel suspensions, automotive suspension springs and stabilizers, stabilizer brackets, damping systems, suspension valves, suspension valve shims and blocks, valve caps, valve inlets, valve seatings, steering dampers and stabilizers, steering stabilizer shocks, steering racks, steering knuckles, air suspension systems, air compressors, coilover suspensions and coilover suspension dampers, height adjustable chassis and landing gears, damper tubes, springs and spring plates, gas pressured springs, leaf springs, overload springs, spring cabs, spring isolators, spring seats, pistons, dividing pistons, piston rods, piston seals, linking rods, dust boots and dust covers, bump stops, oil, air and gas reservoirs and reservoir tubes, head bearings, adjustment assemblies, adjustment discs, adjustment knobs, adjustment rings, adjustment screws, adjustment wheels and adjustment wheel housings; hydraulic units for motor vehicles in the form of shock-absorbing and/or stabilising elements for chassis and chassis superstructures of motor vehicles; hydraulic units for motor vehicles in the form of shock absorbing and/or stabilising elements for chassis and chassis superstructures of motor vehicles and armoured vehicles; vibration dampers for wheel suspensions of motor vehicles, and individual parts and attachments therefor, included in this class; vibration dampers for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; suspension struts, included in this class; suspension struts, included in class 12; suspension struts for vehicles, in particular air suspension struts; combined spring/damper modules for vehicles; combined spring/damper modules for wheel suspensions for vehicles; MacPherson suspension struts for land vehicles; suspension struts with steel springs or air springs for wheel suspensions of motor vehicles, and individual parts and attachments therefor, included in this class; suspension struts with steel springs or air springs or air spring modules for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; gas-filled shock absorbers, in particular hydropneumatic shock absorbers for motor vehicles and for use as machine parts, included in this class; gas filled shock absorbers, adjustable and non-adjustable hydraulic shock absorbers, mono-tube gas pressure shock absorbers, twin-tube hydraulic and gas pressure shock absorbers, adjustable and non-adjustable gas-lift shock absorbers, hydro-pneumatic shock absorbers for motor vehicles; support bearings for motor vehicle vibration dampers; springs for wheel suspensions of motor vehicles, in particular helical compression springs, air springs, single air springs; springs for wheel suspensions of motor vehicles, in particular helical compression springs, air springs, air spring modules, single air springsClass 012 for Parts for motor vehicles and motorsports vehicles, namely automobile wheel suspensions, automotive suspension springs and stabilizers, stabilizer brackets, damping systems, suspension valves, suspension valve shims and blocks, valve caps, valve inlets, valve seatings, steering dampers and stabilizers, steering stabilizer shocks, steering racks, steering knuckles, air suspension systems, air compressors, coilover suspensions and coilover suspension dampers, height adjustable chassis and landing gears, damper tubes, springs and spring plates, gas pressured springs, leaf springs, overload springs, spring cabs, spring isolators, spring seats, pistons, dividing pistons, piston rods, piston seals, linking rods, dust boots and dust covers, bump stops, oil, air and gas reservoirs and reservoir tubes, head bearings, adjustment assemblies, adjustment discs, adjustment knobs, adjustment rings, adjustment screws, adjustment wheels and adjustment wheel housings; hydraulic units for motor vehicles in the form of shock absorbing and/or stabilising elements for chassis and chassis superstructures of motor vehicles and armoured vehicles; vibration dampers for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; suspension struts, included in class 12; suspension struts for vehicles, in particular air suspension struts; combined spring/damper modules for wheel suspensions for vehicles; MacPherson suspension struts for land vehicles; suspension struts with steel springs or air springs or air spring modules for wheel suspensions of motor vehicles, and structural individual parts and attachments therefor, included in class 12; gas filled shock absorbers, adjustable and non-adjustable hydraulic shock absorbers, mono-tube gas pressure shock absorbers, twin-tube hydraulic and gas pressure shock absorbers, adjustable and non-adjustable gas-lift shock absorbers, hydro-pneumatic shock absorbers for motor vehicles; support bearings for motor vehicle vibration dampers; springs for wheel suspensions of motor vehicles, in particular helical compression springs, air springs, air spring modules, single air springs

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 017 for Buffers of rubber, in particular in the form of individual parts and attachments for vibration dampers and suspension struts for wheel suspensions of motor vehicles
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: Buffers of rubber, in particular in the form of individual parts and attachments for vibration dampers and suspension struts for wheel suspensions of motor vehicles; Buffers of rubber, in particular in the form of individual parts and attachments for vibration dampers and suspension struts, namely rubber wheel chocks, elastomeric bearings, rubber bearing inserts, cuffs, for wheel suspensions of motor vehiclesClass 017 for Buffers of rubber, in particular in the form of individual parts and attachments for vibration dampers and suspension struts, namely rubber wheel chocks, elastomeric bearings, rubber bearing inserts, cuffs, for wheel suspensions of motor vehicles

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.

ADDITIONAL STATEMENTS
Color Claim
The color(s) black, white, blue and yellow is/are claimed as a feature of the mark.

Description of mark
The mark consists of the word "BILSTEIN" in white within a blue rectangular background. To the right of the rectangle is a yellow circle outlined in black with a design of a cutaway of a shock absorber in black and white.

SIGNATURE(S)
Response Signature
Signature: /crd/     Date: 08/15/2016
Signatory's Name: Cecilia R. Dickson
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: (412) 471-8815

Response Signature
Signature: /crd/     Date: 08/15/2016
Signatory's Name: Cecilia R. Dickson
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: (412) 471-8815

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.

        
Serial Number: 79180420
Internet Transmission Date: Mon Aug 15 11:07:30 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201608151107305
85487-79180420-55083924d8077e1b2ad91dbde
3d378f8bc8abaf229597441fa5ca4d32936fd30-
N/A-N/A-20160815110234789218