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. 79275865 REDLINE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7927586 5/large) has been amended as follows:

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

Application Serial No. 79/275,865 (REDLINE) Request to withdraw refusal as to trademark application no. 79/275,865 This communication is responsive to the Non-Final Office Action dated March 03, 2020, the Examining Attorney refused registration of the applied-for mark based on an alleged likelihood of confusion with the cited registration, U.S. Registration No. 2,382,929 for REDLINE. Applicant respectfully disagrees and avers that there is no likelihood of confusion and requests that the refusal be withdrawn and allow registration of Applicant's Mark for the reasons set forth below. The Examining Attorney also objected to the identification of the goods. In conformity with the examiner's recommendations, the identification of goods has been appropriately amended as described below. Lastly, as described below, the color description of the mark has been amended in conformity with the Examining Attorney's request. LIKELIHOOD OF CONFUSION U.S. Registration No. 2,382,929 for REDLINE (the ?929 Registration) The Applicant submits that the owner of the '929 Registration is Applicant's distributor for the goods identified in the registration. The applicant is beginning the process of entering into an appropriate assignment of rights in the '929 Registration to the Applicant including an assignment of the associated goodwill. Therefore, following the entry into an appropriate agreement including assigning the cited registration in accordance with 15 U.S. Code ? 1060, the cited registration should not be cited as a bar to the Applicant's applied-for registration. The Applicant would like to reserve the right to present substantive arguments in response to the refusal based on the likelihood of confusion with the '929 Registration in the event the Applicant does not reach an agreement with its distributor. IDENTIFICATION OF GOODS The Applicant adopts the Examining Attorney's suggested modification and amends the identification of the goods as follow: Building materials not of metal for bridging gaps in buildings, bridges, superstructures, and roads, namely, expansion joints; non-metallic building materials, namely, expansion joints made of asphalt, pitch and bitumen for bridging gaps in buildings, bridges, superstructures, and roads; roof-covering materials not of metal; non-metallic building materials, namely, Containment systems for large scale liquid spills or releases, namely, berms made of cement or artificial stone. COLOR DESCRIPTION OF THE MARK The Applicant adopts the Examining Attorney's suggested modification to the description of the mark as follows: The mark consists of the wording REDLINE appearing in white on a red background.

EVIDENCE

Original PDF file:
evi_1-961189227-202008281 74328624170_._Response_to _NFOA_-_79275865.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 019 for Building materials (not of metal), especially for bridging gaps in structural and civil engineering; building materials (non-metallic), namely, expansion joints and shaped pieces mainly of asphalt, pitch and bitumen; roof-covering materials (not of metal); building materials (non-metallic), namely, containers of stone, artificial stone, stoneware or cement, included in this class
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 (not of metal), especially for bridging gaps in structural and civil engineering; Building materials not of metal for bridging gaps in buildings, bridges, superstructures, and roads, namely, expansion joints; building materials (non-metallic), namely, expansion joints and shaped pieces mainly of asphalt, pitch and bitumen; non-metallic building materials, namely, expansion joints made of asphalt, pitch and bitumen for bridging gaps in buildings, bridges, superstructures, and roads; roof-covering materials (not of metal); roof-covering materials not of metal; building materials (non-metallic), namely, containers of stone, artificial stone, stoneware or cement, included in this class; non-metallic building materials, namely, Containment systems for large scale liquid spills or releases, namely, berms made of cement or artificial stone.Class 019 for Building materials not of metal for bridging gaps in buildings, bridges, superstructures, and roads, namely, expansion joints; non-metallic building materials, namely, expansion joints made of asphalt, pitch and bitumen for bridging gaps in buildings, bridges, superstructures, and roads; roof-covering materials not of metal; non-metallic building materials, namely, Containment systems for large scale liquid spills or releases, namely, berms made of cement or artificial stone.

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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Schoop + Co. AG
Proposed: Schoop + Co. AG,
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording REDLINE appearing in white on a red background.

The owner's/holder's proposed attorney information: Dean W. Amburn. Other appointed attorneys are Lina A. Asmar. Dean W. Amburn of Amburn Law PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      4833 Waldon Woods Dr.
      Commerce Township, Michigan 48382
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 6114.
      The phone number is 2482122777.
      The email address is dwa@amburnlaw.com

Dean W. Amburn 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.Correspondence Information (current):
      freigutpartners IP Law Firm,
Correspondence Information (proposed):
      Dean W. Amburn
      PRIMARY EMAIL FOR CORRESPONDENCE: dwa@amburnlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lasmar@amburnlaw.com

The docket/reference number is 6114.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Lina A. Asmar/     Date: 08/28/2020
Signatory's Name: Lina A. Asmar
Signatory's Position: Attorney of record, MI Bar Member

Signatory's Phone Number: 2489960494

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.

Mailing Address:    freigutpartners IP Law Firm,
   Rechtsanwalt Sebastian Saissi
   
   Gämsenstrasse 3
   CH-8006 Zürich,
Mailing Address:    Dean W. Amburn
   Amburn Law PLLC
   4833 Waldon Woods Dr.
   Commerce Township, Michigan 48382
        
Serial Number: 79275865
Internet Transmission Date: Fri Aug 28 18:11:36 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200828181136066
868-79275865-74099bf3e72dd9e5211f2becd73
88fc96ce658e717e9a271965aa69e87adf1a0-N/
A-N/A-20200828174328624170