TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

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PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85246634 has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Aftermarket parts and accessories for vehicles, namely, replacement wheels, tires, brake pads, brake shoes, steering wheels, speed controllers, cabs, enclosures, radios and MP3 players, powertrain components, namely, axles, engine parts, differentials and motors, and suspension components, namely, shock absorbers, springs and lift kits, brushguards, step bars for facilitating vehicle access, and light kits for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles, trailers; Structural parts for gasoline and electric-powered automobiles
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Aftermarket parts and accessories for vehicles, namely, replacement wheels, tires, brake pads, brake shoes, steering wheels, speed controllers, cabs, enclosures, radios and MP3 players, powertrain components, namely, axles, engine parts, differentials and motors, and suspension components, namely, shock absorbers, springs and lift kits, brushguards, step bars for facilitating vehicle access, and light kits for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles, trailers; Aftermarket parts and accessories for land vehicles, namely, wheels, tires, brake pads, brake shoes, steering wheels, electronic speed controllers, cabs, enclosures, namely, soft fabric tops with metal frames for vehicles, axles, differentials and suspension components, namely, shock absorbers, springs and lift kits primarily consisting of leaf springs, shackle mounts, axles and spindles, all for increasing vehicle ground clearance, brush guards, step bars for facilitating vehicle access, and light kits primarily consisting of headlights, taillights, auxiliary decorative lighting and wire harnesses; all for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles, trailers; Structural parts for gasoline and electric-powered automobilesClass 012 for Aftermarket parts and accessories for land vehicles, namely, wheels, tires, brake pads, brake shoes, steering wheels, electronic speed controllers, cabs, enclosures, namely, soft fabric tops with metal frames for vehicles, axles, differentials and suspension components, namely, shock absorbers, springs and lift kits primarily consisting of leaf springs, shackle mounts, axles and spindles, all for increasing vehicle ground clearance, brush guards, step bars for facilitating vehicle access, and light kits primarily consisting of headlights, taillights, auxiliary decorative lighting and wire harnesses; all for gasoline and electric-powered on-road and off-road land vehicles, light-transportation vehicles and low-speed vehicles used as personal residential and neighborhood vehicles, plant personnel carriers, general utility and maintenance cars, motel and resort cars, baggage carriers, golf cars, turf maintenance vehicles, trailers; Structural parts for gasoline and electric-powered automobiles
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant hereby adds the following class of goods/services to the application:
New: Class 007 for Aftermarket parts and accessories for land vehicles, namely, engine parts, namely, air filters, oil filters, spark plugs, head gaskets, intake and exhaust valves, pistons, spark plug wires, crankshafts, piston rings, cams, carburetors, fuel pumps, fuel filters and timing belts, motors
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Aftermarket parts and accessories for vehicles, namely, radios for land vehicles, MP3 players for land vehicles, Global positioning systems (GPS) for land vehicles
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

ADDITIONAL STATEMENTS
Applicant wishes to thank the Examining Attorney, Mr. Edward Fennessy, for the courtesies extended to Applicant's attorney, Mr. Garrett Donley, during the telephone conference of August 10, 2011, in which the best way to clarify the associated goods description for this application was discussed. The Examining Attorney has requested reclassification of a number of items from the originally-filed associated goods description from class 12 into classes 7 and 9. Applicant has amended the application in accordance with the Examining Attorney's request and is submitting herewith the appropriate additional classification fee for the two added classes. The Examining Attorney has also requested clarification of a number of items in the goods description to include the nature, common names and primary components for the items. Applicant has amended the application to also clarify these items, as requested. Applicant respectfully submits that all issues from the Final Office Action have been properly addressed, such that the application should now be in a condition for allowance. However, should the Examining Attorney wish to further discuss any of the amendments made, or any other issues in the application, he is kindly invited to contact Applicant's attorney directly at 248-641-1239, so that any remaining matters can be handled quickly and conveniently.

FEE(S)
Fee(s) in the amount of $650 is being submitted.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Garrett C. Donley/      Date: 08/10/2011
Signatory's Name: Garrett C. Donley
Signatory's Position: Attorney of record, Michigan bar member

Request for Reconsideration Signature
Signature: /Garrett C. Donley/     Date: 08/10/2011
Signatory's Name: Garrett C. Donley
Signatory's Position: Attorney of record, Michigan bar member

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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 not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
RAM Sale Number: 3992
RAM Accounting Date: 08/11/2011
        
Serial Number: 85246634
Internet Transmission Date: Wed Aug 10 17:27:50 EDT 2011
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2011081017275044
2528-85246634-480835d48cc37f341724c48c61
2b5fc7c9-DA-3992-20110810164556938570