Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85290418 REBAR(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85290418) has been amended as follows:

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

The Examining Attorney refused the subject application based on the claim that the REBAR mark is descriptive because the multipurpose hand tools covered by the application are designed to cut rebar.  The only evidence presented to support this descriptiveness claim is a third-party website that incorrectly describes the Applicant’s multipurpose hand tools as “rebar cutters”.  We understand that this reference to “rebar cutters” pertains to a “rebar” that is a type of steel rod. However, Applicant’s REBAR mark is fanciful within the context of Applicant’s multipurpose hand tools, which could not feasibly be used to cut a solid steel metal like rebar.  In fact, none of applicant’s goods could be used in any mode with rebar steel rods, and there is no relevant meaning for the term “rebar” within applicant’s industry.

As requested, the Applicant has attached an advertisement for its multipurpose REBAR hand tool.  As there is no viable evidence to demonstrate that the REBAR mark is descriptive of the goods, Applicant respectfully submits that the descriptiveness refusal be withdrawn and that the subject application be approved for registration at the earliest date. 

EVIDENCE
Evidence in the nature of screenshots of online advertisement of REBAR multipurpose hand tool has been attached.
Original PDF file:
evi_3810611210-145833145_._Leatherman.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Multipurpose hand tool
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Multipurpose hand tool; Folding multipurpose hand tool comprised of multiple blades and one or more of the following components: scissors, pliers, wire cutters, wire stripers, screw drivers, saws, files, can openers, and bottleClass 008 for Folding multipurpose hand tool comprised of multiple blades and one or more of the following components: scissors, pliers, wire cutters, wire stripers, screw drivers, saws, files, can openers, and bottle
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

SIGNATURE(S)
Response Signature
Signature: /Martha Gayle Barber/     Date: 12/31/2011
Signatory's Name: Martha Gayle Barber
Signatory's Position: Attorney of Record, NC Bar Member

Signatory's Phone Number: 7044441032

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.

        
Serial Number: 85290418
Internet Transmission Date: Tue Jan 03 09:52:38 EST 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2012010309523820
2554-85290418-49099c3a819cd835b88a35178f
ca61c037-N/A-N/A-20111230145833145981