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. 85667781 RAYCHEM(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/85667781/large) 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 009 for Electric cable sensing and measuring units and parts therefor; mechanical or electric fluid sensing devices; splices, tees and terminations for electric heating cables; splices, tees and terminations for electric sensing cables; electric sensing cable for conductive fluids; junction boxes; electric control panels; circuit breakers; electric power cables; electric signal cables; fire resistant electric cables; mounting clamps, mounting brackets and adaptors especially adapted for use with electric cables
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 04/00/1983 and first used in commerce at least as early as 04/00/1983 , and is now in use in such commerce.

Proposed: Class 009 for Electric cable sensing and measuring units and parts therefor; mechanical or electric fluid sensing devices; splices, tees and terminations for electric heating cables; splices, tees and terminations for electric sensing cables; electric sensing cable for conductive fluids; junction boxes; electric control panels; circuit breakers; electric power cables; electric signal cables; fire resistant electric cables; mounting clamps, mounting brackets and adaptors especially adapted for use with electric cables
Deleted Filing Basis: 1(a)
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 011 for Heating apparatus, namely, electric heating cables, electric heating pads, and electric heating mats; heating apparatus employing steam, namely, steam pipes and tubes; heating apparatus employing hot fluids, namely fluid pipes and tubes; heated tubing bundles; and heating elements; mounting clamps, mounting brackets and adaptors especially adapted for use with heating cables; mechanical fittings, controllers, and traps especially adapted for steam heating apparatuses; mechanical fittings, controllers, and traps especially adapted for hot fluid heating apparatuses
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 04/00/1983 and first used in commerce at least as early as 04/00/1983 , and is now in use in such commerce.

Proposed: Class 011 for Heating apparatus, namely, electric heating cables, electric heating pads, and electric heating mats; heating apparatus employing steam, namely, steam pipes and tubes; heating apparatus employing hot fluids, namely fluid pipes and tubes; heated tubing bundles; and heating elements; mounting clamps, mounting brackets and adaptors especially adapted for use with heating cables; mechanical fittings, controllers, and traps especially adapted for steam heating apparatuses; mechanical fittings, controllers, and traps especially adapted for hot fluid heating apparatuses
Deleted Filing Basis: 1(a)
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 017 for Thermally insulated tubing bundles; self-adhesive tapes for various uses such as, but not limited to, attaching cable to pipe, and not for stationery use or medical or household purposes; and tapes for various uses such as, but not limited to, attaching cable to pipe, and not for stationery use or medical or household purposes
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 04/00/1983 and first used in commerce at least as early as 04/00/1983 , and is now in use in such commerce.

Proposed: Class 017 for Thermally insulated tubing bundles; self-adhesive tapes for various uses such as, but not limited to, attaching cable to pipe, and not for stationery use or medical or household purposes; and tapes for various uses such as, but not limited to, attaching cable to pipe, and not for stationery use or medical or household purposes
Deleted Filing Basis: 1(a)
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant respectfully submits a copy of the Notice of Cancellation for U.S. Registration No. 1321920, which was cancelled on March 3, 2015. Further, in response to the specimen refusal, Applicant respectfully submits herein a request to amend the filing basis of the instant application to Section 1(b) for Class 9, Class 11 and Class 17. Applicant respectfully submits that the application be promptly passed to publication.

Original PDF file:
mis-173922089-20150713125730058520_._Notice_of_Cancellation.pdf
Converted PDF file(s) ( 2 pages)
Miscellaneous File1
Miscellaneous File2

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Driscoll A. Nina/      Date: 07/16/2015
Signatory's Name: Driscoll A. Nina
Signatory's Position: Vice President of Intellectual Property

Response Signature
Signature: /kevin j. mcdevitt/     Date: 07/16/2015
Signatory's Name: Kevin J. McDevitt
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 847-881-2451

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 85667781
Internet Transmission Date: Thu Jul 16 11:26:34 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20150716112634364
212-85667781-540819e5a72bd50885cc7c58ebc
72ed58a3435a3d6934e7f5578ba289c7a7ede6-N
/A-N/A-20150713125730058520