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 09/20/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 79237600 KNAUF (Stylized and/or with Design, see http://uspto.report/TM/79237600/mark.png) has been amended as follows:

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

Applicant seeks registration of the mark KNAUF on the Principal Register. In the pending Office Action, the Examining Attorney maintains the Section 2(d) rejection and objects to certain aspects of the ID for Classes 7, 9, 11, 16 and 19. By this submission, applicant (1) submits evidence establishing a unity of control among applicant, its parent company and the owners of record of the cited registrations and (2) amends the IDs for Classes 7, 9, 11, 16 and 19 in the manner suggested by the Examining Attorney. As to the Section 2(d) rejection, applicant repeats and hereby incorporates herein by reference the remarks stated in its prior response, filed April 15, 2019. In addition, applicant attaches a sworn declaration (in compliance with 37 C.F.R. ?2.20) of Regina Gabel, an authorized representative of Gebr. Knauf KG (the "Gabel Declaration"). As stated in the Gabel Declaration: (1) Gebr. Knauf KG owns, directly or indirectly, at least a controlling interest in Applicant (see paragraph 4 of the Gabel Declaration); (2) Gebr. Knauf KG also owns, directly or indirectly, at least a controlling interest in the following other entities, which are affiliated companies to the Applicant: Knauf Insulation, LLC, which the owner of record of U.S. Trademark Reg. Nos. 1,888,480 and 2,907,234; Knauf AMF GmbH & Co. KG, which is the owner of record of U.S. Trademark Reg. No. 3,835,177; and Knauf Insulation Holding GmbH, which is the owner of record of U.S. Trademark Reg. No. 4,394,390 (see paragraph 6 of the Gabel Declaration); (3) by virtue of its ownership of at least a controlling interest in Applicant and its affiliated companies, Gebr. Knauf KG has corporate power and authority to control the manner and use of the KNAUF name and mark by all of the aforementioned entities as well as the quality of the goods and/or services provided by such entities under and in association with the KNAUF name and mark (see paragraph 7 of the Gabel Declaration); (4) Gebr. Knauf KG does, in fact, exercise control over the manner and use of the KNAUF name and mark by the aforementioned entities as well as the quality of the goods and/or services provided by such entities under and in association with the KNAUF name and mark (see paragraph 8 of the Gabel Declaration); and (5) a "unity of control" over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used by all of the entities identified above, including Applicant, does in fact exist (see paragraph 9 of the Gabel Declaration). In view of the foregoing, applicant respectfully requests withdrawal of the Section 2(d) rejection based on Reg. Nos. 1888480, 2907234, 3835177, and 4394390, which are all owned by related entities under common ownership of control. In the event any issue remains that can be informally resolved, the Examining Attorney is encouraged to contact the undersigned attorney at 801-321-8847 or jrichards@wnlaw.com.

EVIDENCE
Evidence in the nature of Declaration of Regina Gabel directed to the issue of unity of control has been attached.
Original PDF file:
evi_20918088130-20191125123042942938_._KNAUF_Declaration.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Machines, namely, namely, machines for generating electricity and gypsum from waste gases; oil refining machines; natural gas refining machines; current generators; condensing installations comprised of fans, heat exchangers, condensers, valves; turbines; motors and engines except for land vehicles; machine coupling and transmission components except for land 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: Machines, namely, namely, machines for generating electricity and gypsum from waste gases; oil refining machines; natural gas refining machines; current generators; condensing installations comprised of fans, heat exchangers, condensers, valves; condensing installations, namely, air-cooled condensers comprised of fans, heat exchangers, condensers, and valves; turbines; turbines, namely, hydraulic turbines, other than for land vehicles; motors and engines except for land vehicles; machine coupling and transmission components except for land vehiclesClass 007 for Machines, namely, namely, machines for generating electricity and gypsum from waste gases; oil refining machines; natural gas refining machines; current generators; condensing installations, namely, air-cooled condensers comprised of fans, heat exchangers, condensers, and valves; turbines, namely, hydraulic turbines, other than for land vehicles; motors and engines except for land vehicles; machine coupling and transmission components except for land 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus
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, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; measuring apparatus and instruments, namely, level gauges, angle gauges, length measuring gauges; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; blank magnetic data carriers, blank recordable optical disc; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatusClass 009 for measuring apparatus and instruments, namely, level gauges, angle gauges, length measuring gauges; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recordable optical disc; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus

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 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, namely, lighting apparatus, namely, lighting installations; steam generating installations; heating systems for residential and commercial buildings
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: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, namely, lighting apparatus, namely, lighting installations; steam generating installations; heating systems for residential and commercial buildings; heating systems for residential and commercial buildings comprised of boilers, valves, pipes, manifolds, control panel switches, and electrical wire, all sold as a unitClass 011 for Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, namely, lighting apparatus, namely, lighting installations; steam generating installations; heating systems for residential and commercial buildings comprised of boilers, valves, pipes, manifolds, control panel switches, and electrical wire, all sold as a unit

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 016 for Paper, cardboard and goods made from these materials, namely, paper strips; printed matter, namely, books, magazines, manuals featuring building construction and drywall systems; paint brushes; printed instructional and teaching material in the field of building construction, and drywall systems, except apparatus
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: Paper, cardboard and goods made from these materials, namely, paper strips; Paper, cardboard and goods made from these materials, namely, paper strips, namely, being reinforcement and cover strips for construction purposes; printed matter, namely, books, magazines, manuals featuring building construction and drywall systems; paint brushes; printed instructional and teaching material in the field of building construction, and drywall systems, except apparatusClass 016 for Paper, cardboard and goods made from these materials, namely, paper strips, namely, being reinforcement and cover strips for construction purposes; printed matter, namely, books, magazines, manuals featuring building construction and drywall systems; paint brushes; printed instructional and teaching material in the field of building construction, and drywall systems, except apparatus

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 019 for Building materials, non-metallic, namely, building panels, not of metal; gypsum boards; plasterboards; drywall; plaster for building purposes; composite panels composed primarily out of nonmetal materials; floor panels; floor underlayments; Facing mortar; facing plaster; filling cement; mortar for building; bonding mortar; joint mortar, cement filler for use as a building material; plaster; gypsum for use as building material; beams not of metal; brackets, not of metal, for building; braces; supports; door frames, jambs, panels; non-metal architectural moldings and finish trim; non-metal door frames, door panels, door units, doors; non-metal expansion joints for floors and walls; non-metal floors; non-metal partitions for building; non-metal skylights; non-metal tiles for walls, floor and ceilings; non-metal wainscoting; non-metal wallcladdings for buildings; non-metal weatherboards; non-meta windows, window frames, jambs, sashes, screens, shutters and sills; pre-fabricated non-metal walls; non-metallic rigid pipes for building construction purposes; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not 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: Building materials, non-metallic, namely, building panels, not of metal; gypsum boards; plasterboards; drywall; plaster for building purposes; composite panels composed primarily out of nonmetal materials; floor panels; floor panels not of metal; floor underlayments; Facing mortar; facing plaster; filling cement; mortar for building; bonding mortar; bonding mortar for building purposes; joint mortar, cement filler for use as a building material; joint mortar and cement filler for use as a building material; plaster; gypsum for use as building material; beams not of metal; brackets, not of metal, for building; braces; construction elements not made of metal, namely, braces; supports; construction elements not made of metal, namely, supports; door frames, jambs, panels; door frames, jambs, and panels not of metal; non-metal architectural moldings and finish trim; non-metal door frames, door panels, door units, doors; non-metal expansion joints for floors and walls; non-metal floors; non-metal partitions for building; non-metal skylights; non-metal tiles for walls, floor and ceilings; non-metal wainscoting; non-metal wallcladdings for buildings; non-metal weatherboards; non-meta windows, window frames, jambs, sashes, screens, shutters and sills; non-metal windows, window frames, jambs, sashes, screens, shutters and sills; pre-fabricated non-metal walls; non-metallic rigid pipes for building construction purposes; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metalClass 019 for Building materials, non-metallic, namely, building panels, not of metal; gypsum boards; plasterboards; drywall; plaster for building purposes; composite panels composed primarily out of nonmetal materials; floor panels not of metal; floor underlayments; Facing mortar; facing plaster; filling cement; mortar for building; bonding mortar for building purposes; joint mortar and cement filler for use as a building material; plaster; gypsum for use as building material; beams not of metal; brackets, not of metal, for building; construction elements not made of metal, namely, braces; construction elements not made of metal, namely, supports; door frames, jambs, and panels not of metal; non-metal architectural moldings and finish trim; non-metal door frames, door panels, door units, doors; non-metal expansion joints for floors and walls; non-metal floors; non-metal partitions for building; non-metal skylights; non-metal tiles for walls, floor and ceilings; non-metal wainscoting; non-metal wallcladdings for buildings; non-metal weatherboards; non-metal windows, window frames, jambs, sashes, screens, shutters and sills; pre-fabricated non-metal walls; non-metallic rigid pipes for building construction purposes; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal

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.

The applicant hereby appoints Jonathan W. Richards. Other appointed attorneys are Michael J. Frodsham. Jonathan W. Richards of Workman Nydegger, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      60 E. South Temple #1000
      Salt Lake City, Utah 84111
      United States
to submit this Request for Reconsideration after Final Action on behalf of the applicant.
The docket/reference number is 16056.125.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is docketing@wnlaw.com

Jonathan W. Richards submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Meissner Bolte Partnerschaft mbB. Meissner Bolte Partnerschaft mbB, is located at

      Bankgasse 3
      90402 Nürnberg,
      DE

The applicants proposed correspondence information: Jonathan W. Richards. Jonathan W. Richards of Workman Nydegger, is located at

      60 E. South Temple #1000
      Salt Lake City, Utah 84111
      United States
The docket/reference number is 16056.125.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is docketing@wnlaw.com; jrichards@wnlaw.com; mstringham@wnlaw.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /jonathanwrichards_29843/     Date: 11/25/2019
Signatory's Name: Jonathan W. Richards
Signatory's Position: Attorney for Applicant, Utah Bar Member

Signatory's Phone Number: 801-321-8847

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Meissner Bolte Partnerschaft mbB
   
   
   Bankgasse 3
   90402 Nürnberg,
Mailing Address:    Jonathan W. Richards
   Workman Nydegger
   60 E. South Temple #1000
   Salt Lake City, Utah 84111
        
Serial Number: 79237600
Internet Transmission Date: Mon Nov 25 12:40:02 EST 2019
TEAS Stamp: USPTO/RFR-XXX.XXX.XX.XXX-201911251240029
90970-79237600-700ddfc24897fc129b6f2fdac
eed885873d73653389ac8b4281deb3ae85750a6-
N/A-N/A-20191125123042942938