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 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 1957 (Rev 10/2011)

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

Response to Office 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 raised objections under Sections 2(d) and 2(e)(4) and raised various objections to the identification of goods and services. Applicant respectfully requests reconsideration in view of the following amendments, comments and observations. As to the objections to the ID, by this submission applicant has amended the ID in the manner suggested by the Examining Attorney. Applicant has also amended the application to (1) clarify the nature of the entity and (2) add a description of the mark. As to the Section 2(d) rejection, applicant would respectfully point out that all of the cited registrations are owned by "related" companies (within the meaning provided in Section 45 of the Lanham Act) that are under common ownership and control. More specifically, applicant would show that: applicant (Knauf Gips KG) and the owners of record of the cited registrations (Knauf Fiber Glass GmbH, Knauf Insulation GmbH and Knauf Insulation Holding GmbH) are all sister companies that are under the common ownership and control of their common parent company, Gebr. Knauf KG (a German company); that such parent company has corporate power and authority to control 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; and that such parent company 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. In view of these facts, applicant respectfully requests withdrawal of the Section 2(d) rejection. As to the Section 2(e)(4) rejection, applicant has amended the application to claim acquired distinctiveness. To that end, applicant would point out that four other registrations already exist on the Principal Register for marks comprising KNAUF (albeit held in the names of related entities as mentioned above), that applicant is part of a large multinational family of companies, that the KNAUF name has been in use in the United States for over 40 years (based on the use dates specified in Reg. No. 1888480), that the KNAUF name and mark are well-known in the United States and elsewhere and associated with applicant's family of companies, and that, as a result of the prior registrations coupled with the long use in the U.S., the KNAUF name has acquired distinctiveness as an indication of origin, separate and apart from a surname. More specifically, as stated on the company's website (http://www.knauf.com/en/about-knauf/about-us/company-profile/), the Knauf group of companies "had comparably humble beginnings. Specifically, the family company was established in 1932, when brothers Alfons and Karl Knauf secured the mining rights to gypsum deposits in the Schengen community (Obermosel) in Germany. Courage, determination, and business savvy were the reasons that only a year later Knauf established its first gypsum factory in Perl (Moselle) ? laying the foundation for what would later be the Knauf Group. Today, Knauf is one of the world's leading manufacturers of modern insulation materials, drylining systems, plasters and accessories, thermal insulation composite systems, paints, floor screed, floor systems, and construction equipment and tools. With 220 production facilities and sales organisations in over 80 countries, 28,000 employees worldwide, and sales of 7.2 billion Euro (in 2018), the Knauf Group is without doubt one of the big players on the market ? in Europe, the USA, South America, Russia, Asia, Africa, and Australia." As to the specific questions posed by the Examining Attorney, applicant provides the following responses in the order in which the questions are presented in the Office Action: (1) Knauf is not particularly rare; (2) certain shareholders and employees associated with the Knauf group of companies have Knauf as their surname; (3) as detailed above, the term Knauf has also come to be recognized as a company name and distinctive mark associated with the Knauf family of companies, separate and apart from its meaning as merely a surname; (4) the term does have the structure and pronunciation of a surname; and (5) applicant believes the stylized features of the applied-for mark distinguish the mark from a surname. In view of the foregoing, applicant respectfully requests withdrawal of the Section 2(e) (4) rejection. In the event any issue remains that can be informally resolved, the Examining Attorney is invited to contact the undersigned attorney at 801-321-8847 or jrichards@wnlaw.com.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry
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: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; tempering and soldering chemical preparations; chemical substances for preserving foodstuffs; chemical preparations for preserving foodstuffs; tanning substances; adhesives for use in industry; adhesives used in industryClass 001 for Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering chemical preparations; chemical preparations for preserving foodstuffs; adhesives for use in industry

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 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists
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: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; preservatives against rust and against deterioration of wood in the nature of a coating; colorants; mordants; wood mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; metals in foil and powder form for use in painting, decorating, printing and artClass 002 for Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood in the nature of a coating; colorants; wood mordants; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art

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; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
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; metal building materials; metal building materials, namely, building panels; metal profiles for arranging devices on and in walls and ceiling and other surfaces; materials of metal for railway tracks; metal sub-constructions for floors, wall and ceilings, namely, metal floor panels, and building wall and ceiling framing made primarily of metal; metal hangers for ceilings for lighting and electrical fixtures; ironmongery, small items of metal hardware; metal building materials for fire protection and for protection against moisture and vibrations, namely, metal reinforcement materials for building; pipes and tubes of metal; metal coverings for ceilings; safes; metal tiles for walls, floors and ceilings; goods of common metal not included in other classes; transportable buildings of metal; ores; materials of metal for railway track construction; non-electric cables and wires of common metal; ironmongery being small items of metal hardware, namely, metal attachment means, namely, screws, eye bolts, nails, clamps, hooks, metal sheets, washers; pipes and tubes of etal; metal safes; goods of common metal, namely, metal doors, metal door frames, metal door bolts, metal sliding doors, door fasteners of metal, door fittings of metal, fittings of metal for windowsClass 006 for Common metals and their alloys; metal building materials, namely, building panels; metal profiles for arranging devices on and in walls and ceiling and other surfaces; metal sub-constructions for floors, wall and ceilings, namely, metal floor panels, and building wall and ceiling framing made primarily of metal; metal hangers for ceilings for lighting and electrical fixtures; metal building materials for fire protection and for protection against moisture and vibrations, namely, metal reinforcement materials for building; metal coverings for ceilings; metal tiles for walls, floors and ceilings; transportable buildings of metal; materials of metal for railway track construction; non-electric cables and wires of common metal; ironmongery being small items of metal hardware, namely, metal attachment means, namely, screws, eye bolts, nails, clamps, hooks, metal sheets, washers; pipes and tubes of etal; metal safes; goods of common metal, namely, metal doors, metal door frames, metal door bolts, metal sliding doors, door fasteners of metal, door fittings of metal, fittings of metal for windows

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 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending 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: Machines and machine tools; Machines, namely, namely, machines for generating electricity and gypsum from waste gases; motors and engines (except for land vehicles); oil refining machines; machine coupling and transmission components (except for land vehicles); natural gas refining machines; agricultural implements other than hand-operated; current generators; incubators for eggs; condensing installations comprised of fans, heat exchangers, condensers, valves; automatic vending machines; turbines; 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 comprised of fans, heat exchangers, condensers, valves; turbines; 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 008 for Hand tools and implements (hand-operated); cutlery; side arms; razors
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 (hand-operated); Hand tools and hand-operated implements, namely, spatulas, drywall hawks, Hand-operated telescopic arm for fixing panels of plaster on wood or walls and ceilings; cutlery; side arms; razorsClass 008 for Hand tools and hand-operated implements, namely, spatulas, drywall hawks, Hand-operated telescopic arm for fixing panels of plaster on wood or walls and ceilings

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: 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

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
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; 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 buildingsClass 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

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, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks
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, not included in other classes; Paper, cardboard and goods made from these materials, namely, paper strips; printed matter; printed matter, namely, books, magazines, manuals featuring building construction and drywall systems; book binding material; paint brushes; photographs; printed instructional and teaching material in the field of building construction, and drywall systems, except apparatus; stationery; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocksClass 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

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 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes 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: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in further manufacture; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; flexible pipes not of metalClass 017 for Plastics in extruded form for use in further manufacture; packing, stopping and insulating materials; flexible pipes, 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Building materials (non-metallic); non-metallic rigid pipes for building; 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); Building materials, non-metallic, namely, building panels, not of metal; non-metallic rigid pipes for building; 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 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; 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

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 020 for Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
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: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; goods of wood, cork, reed, cane, wicker, horn, bone, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely, non-metal profiles for arranging devices on and in walls, ceilings and other surfacesClass 020 for Furniture, mirrors, picture frames; goods of wood, cork, reed, cane, wicker, horn, bone, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely, non-metal profiles for arranging devices on and in walls, ceilings and other surfaces

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 027 for Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)
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: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Carpets, rugs, mats and matting, linoleum and other materials, namely, rubber, plastic, textiles, all for covering existing floors; wall hangings (non-textile); non-textile wall hangingsClass 027 for Carpets, rugs, mats and matting, linoleum and other materials, namely, rubber, plastic, textiles, all for covering existing floors; non-textile wall hangings

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 Building construction; repair; installation 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: Building construction; repair; repair of buildings; installation services; installation of building insulation, installation of drywall panelsClass 037 for Building construction; repair of buildings; installation of building insulation, installation of drywall panels

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 041 for Education; providing of training; entertainment; sporting and cultural activities
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: Education; Education, namely, workshops, seminars and conferences in the field of building construction, architecture, drywall systems and engineering; providing of training; providing of training, namely, training in the field of building construction and drywall systems; entertainment; sporting and cultural activitiesClass 041 for Education, namely, workshops, seminars and conferences in the field of building construction, architecture, drywall systems and engineering; providing of training, namely, training in the field of building construction and drywall systems

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 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software
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 and technological services and research and design relating thereto; Scientific and technological services, namely, planning of buildings and infrastructure systems for buildings, design of factory buildings, residential building design, research on building construction, engineering, engineering in the field of manufacturing building materials, architectural services, design of installations for the building material industry; industrial analysis and research services; industrial analysis and research services in the field of building materials; design and development of computer hardware and softwareClass 042 for Scientific and technological services, namely, planning of buildings and infrastructure systems for buildings, design of factory buildings, residential building design, research on building construction, engineering, engineering in the field of manufacturing building materials, architectural services, design of installations for the building material industry; industrial analysis and research services in the field of building materials; design and development of computer hardware and software

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 045 for Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals
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: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individualsClass 045 for Legal 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 AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Knauf Gips KG having an address of
      
      Am Bahnhof 797346 Iphofen
      ,
      Germany

Proposed: Knauf Gips KG, a corporation of Germany, having an address of
      
      Am Bahnhof 7
      Iphofen, 97346
      Germany

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized word KNAUF.

SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /jonathanwrichards_29843/      Date: 04/15/2019
Signatory's Name: Jonathan W. Richards
Signatory's Position: Attorney for Applicant, Utah Bar Member
Signatory's Phone Number: 801-321-8847


Response Signature
Signature: /jonathanwrichards_29843/     Date: 04/15/2019
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 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: 79237600
Internet Transmission Date: Mon Apr 15 19:59:10 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201904151959108
98406-79237600-620735d581bece5c7c1c8a063
435de1194eaa909621f681e6a7e7d59f3693b932
4e-N/A-N/A-20190415194852254655