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. 85566966 BARTON(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85566966) has been amended as follows:

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

In response to the Examining Attorney's claim that Applicant's mark is primarily merely a surname, Applicant, per the Examining Attorney's suggestion, amends its application to seek registration on the Principal Register under Section 2(f).  Applicant has attached the appropriate declaration in support of acquired distinctiveness to this Response.

EVIDENCE

Original PDF file:
evi_76748130-103151744_._Declaration_of_distinctiveness_Barton_Standard.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Waterjet Abrasives; mineral abrasives
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1878 and first used in commerce at least as early as 00/00/1878 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Waterjet Abrasives; Industrial abrasives for use in waterjet cutting, surface preparation, and blasting; mineral abrasives; mineral abrasives for waterjet cutting, surface preparation, and blastingClass 003 for Industrial abrasives for use in waterjet cutting, surface preparation, and blasting; mineral abrasives for waterjet cutting, surface preparation, and blasting
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1878 and first used in commerce at least as early as 00/00/1878 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Manufacturer of cutting, finishing and surface preparation products, namely, garnet abrasive grains and powders, coated and bonded abrasives and blasting abrasives for industrial and commercial applications
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1878 and first used in commerce at least as early as 00/00/1878 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Manufacturer of cutting, finishing and surface preparation products, namely, garnet abrasive grains and powders, coated and bonded abrasives and blasting abrasives for industrial and commercial applications; Manufacturer of cutting, finishing and surface preparation products, namely, garnet abrasive grains and powders, coated and bonded abrasives and blasting abrasives for industrial and commercial applications to the order and specification of othersClass 040 for Manufacturer of cutting, finishing and surface preparation products, namely, garnet abrasive grains and powders, coated and bonded abrasives and blasting abrasives for industrial and commercial applications to the order and specification of others
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1878 and first used in commerce at least as early as 00/00/1878 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
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 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
Original PDF file:
HS_76748130-103151744_._Trademark_Application_Barton_Standard_Characters_12-20-12.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: R. Randolph Rapple
Signatory's Position: President

Response Signature
Signature: /amyecarroll/     Date: 12/20/2012
Signatory's Name: Amy E. Carroll
Signatory's Position: Attorney of Record [DC Bar Member]

Signatory's Phone Number: 202-842-8800

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: 85566966
Internet Transmission Date: Thu Dec 20 11:27:34 EST 2012
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201212201127349661
09-85566966-49049ba58659f61a184ecab55b95
865bbb8-N/A-N/A-20121220103151744350