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. 85640249 PMI (Stylized and/or with Design, see http://uspto.report/TM/85640249/mark.png) has been amended as follows:

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

This is responsive to the Office Action electronically mailed November 13, 2013.  All issues raised by the Examining Attorney are addressed herein and the subject application is believed to be in condition for acceptance and publication. 

First, Applicant acknowledges with appreciation the Examining Attorney’s assurances that the goods and services listed in Classes 17, 37 and 42 are acceptable as written.  Applicant has amended the language in Classes 6 and 9 in accordance with the suggestions set forth by the Examining Attorney.  With respect to Class 6, the Examining Attorney wanted Applicant to expand upon the common commercial or generic name of the terminal fittings.  The common commercial name of the terminal fittings is “terminations.”  Please see the attached pages from Applicant’s written materials which show that the word “termination” is a term of art in Applicant’s field (Exhibit A).  In addition, the attached Google search result pages shows that “termination” is a widely used term in association with wire and cable (Exhibit B).  Thus, Applicant submits that “terminations” is an appropriate term for the identification of goods and addresses the Examining Attorney’s request for clarification. 

In addition, Applicant has clarified the cable separator language in both Classes 6 and 9 to specify that the separators serve to support and separate cable and wire and ropes and strands thereof. Applicant submits that cable separator is the proper term of art and the qualifying language serves to identify the purpose of the product. 

The remaining language provided by the Examining Attorney in Classes 6 and 9 has been adopted in its entirety. 

Applicant does not seek to include Class 8.

All issues having now been fully addressed, the application is believed to be in condition for acceptance and publication.  Early notice to that effect is solicited.

EVIDENCE
Evidence in the nature of Exhibits A and B has been attached.
Original PDF file:
evi_3867194146-111123401_._PMIZ500041_Exhibits.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Terminal fittings, namely, metal loops and rings for lines, cable, strands and synthetic ropes; metal dead ends for securing, gripping, supporting, and protecting lines, cables, strands, synthetic ropes, and wires; strands, namely, non-electric single or multi-strand wire; spacers for parallel lines, cable, strands, and synthetic ropes, namely, spacer brackets of metal; metal support pieces and tangent supports for cables and wires; metal hardware for securing, gripping, supporting, and protecting lines, cable, strands and synthetic ropes, namely, suspensions, dead ends, spacers, repair rods, supports and components thereof; yoke plates, clevises, socket eyes in the nature of metal eye bolts, and hold down shackles in the nature of metal shackles for lifting and rigging; steel lashing rods and wires and terminations for gripping underwater cables; steel armor rods for securing, gripping, supporting and protecting lines, cable, strands and synthetic ropes; metal suspension assemblies for lines, cable, strands and synthetic ropes, namely, brackets, connectors, and plates; cable separators, in the nature of metal and non-metal blocks; supporting and routing devices for data conductors, namely, metal brackets, supports, support blocks, and metal clamps
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: Terminal fittings, namely, metal loops and rings for lines, cable, strands and synthetic ropes; Terminations, namely, metal loops and rings for lines, cable, strands and synthetic ropes; metal dead ends for securing, gripping, supporting, and protecting lines, cables, strands, synthetic ropes, and wires; strands, namely, non-electric single or multi-strand wire; spacers for parallel lines, cable, strands, and synthetic ropes, namely, spacer brackets of metal; metal support pieces and tangent supports for cables and wires; metal hardware for securing, gripping, supporting, and protecting lines, cable, strands and synthetic ropes, namely, suspensions, dead ends, spacers, repair rods, supports and components thereof; yoke plates, clevises, socket eyes in the nature of metal eye bolts, and hold down shackles in the nature of metal shackles for lifting and rigging; steel lashing rods and wires and terminations for gripping underwater cables; steel armor rods for securing, gripping, supporting and protecting lines, cable, strands and synthetic ropes; metal suspension assemblies for lines, cable, strands and synthetic ropes, namely, brackets, connectors, and plates; cable separators, in the nature of metal and non-metal blocks; cable separators, namely, metal and non-metal blocks for supporting and separating cables, lines, synthetic ropes and wires, and strands thereof; supporting and routing devices for data conductors, namely, metal brackets, supports, support blocks, and metal clamps; metal clamps for wire rope and electromechanical and optical cablesClass 006 for Terminations, namely, metal loops and rings for lines, cable, strands and synthetic ropes; metal dead ends for securing, gripping, supporting, and protecting lines, cables, strands, synthetic ropes, and wires; strands, namely, non-electric single or multi-strand wire; spacers for parallel lines, cable, strands, and synthetic ropes, namely, spacer brackets of metal; metal support pieces and tangent supports for cables and wires; metal hardware for securing, gripping, supporting, and protecting lines, cable, strands and synthetic ropes, namely, suspensions, dead ends, spacers, repair rods, supports and components thereof; yoke plates, clevises, socket eyes in the nature of metal eye bolts, and hold down shackles in the nature of metal shackles for lifting and rigging; steel lashing rods and wires and terminations for gripping underwater cables; steel armor rods for securing, gripping, supporting and protecting lines, cable, strands and synthetic ropes; metal suspension assemblies for lines, cable, strands and synthetic ropes, namely, brackets, connectors, and plates; cable separators, namely, metal and non-metal blocks for supporting and separating cables, lines, synthetic ropes and wires, and strands thereof; supporting and routing devices for data conductors, namely, metal brackets, supports, support blocks, and metal clamps; metal clamps for wire rope and electromechanical and optical cables
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Hardware accessories for electrical ropes, cables, strands, wires and fiber optic cables, namely, cable connectors, cable cleavers, clamps for wire rope and electromechanical and optical cables sold separately or as a unit; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables; damping assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, vibration dampeners; electrical connectors; cable protectors, namely, sheaths for electric cables; suspension assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, brackets, and plates; cable separators, in the nature of metal and non-metal support pieces; electro-mechanical cables and fiber optic cables; splices for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; metal splice connectors for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; strain relief couplings for use with underwater cables
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: Hardware accessories for electrical ropes, cables, strands, wires and fiber optic cables, namely, cable connectors, cable cleavers, clamps for wire rope and electromechanical and optical cables sold separately or as a unit; Hardware accessories for electrical ropes, cables, strands, wires and fiber optic cables, namely, cable connectors, sold separately or as a unit; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, electrical shielding spacers for cables and cable assemblies; damping assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, vibration dampeners; electrical connectors; cable protectors, namely, sheaths for electric cables; suspension assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, brackets, and plates; cable separators, in the nature of metal and non-metal support pieces; cable separators, namely, metal and non-metal support pieces for supporting and separating cables, lines, synthetic ropes and wires, and strands thereof; electro-mechanical cables and fiber optic cables; splices for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; metal splice connectors for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; strain relief couplings for use with underwater cables; electric strain relief couplings for use with underwater cablesClass 009 for Hardware accessories for electrical ropes, cables, strands, wires and fiber optic cables, namely, cable connectors, sold separately or as a unit; distance spacing assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, electrical shielding spacers for cables and cable assemblies; damping assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, vibration dampeners; electrical connectors; cable protectors, namely, sheaths for electric cables; suspension assemblies for electrical ropes, cables, strands, wires and fiber optic cables, namely, brackets, and plates; cable separators, namely, metal and non-metal support pieces for supporting and separating cables, lines, synthetic ropes and wires, and strands thereof; electro-mechanical cables and fiber optic cables; splices for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; metal splice connectors for non-electric wire and cable, electro-mechanical cable, and fiber optic cable; electric strain relief couplings for use with underwater cables
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: /sandramkoenig/     Date: 05/13/2014
Signatory's Name: Sandra M. Koenig
Signatory's Position: Associate of attorney of record, Ohio bar member

Signatory's Phone Number: 216-363-9000

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: 85640249
Internet Transmission Date: Tue May 13 11:19:15 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2014051311191525
8556-85640249-50096a69e3daaebd11fe03aa06
ec16fb5e4ea405cbaaa8dab45e42514cc5c2eff9
2-N/A-N/A-20140513111123401510