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. 86256185 FCA (Stylized and/or with Design, see http://uspto.report/TM/86256185/mark.png) 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 007 for AIR CLEANERS, ALTERNATORS, BEARINGS, CARBURETORS, EXHAUST PIPES, FUEL FILTERS, FUEL INJECTORS, MUFFLERS, OIL FILTERS, PISTONS, RADIATORS, TURBOCHARGERS; MOTOR VEHICLE PARTS, NAMELY, ACTUATORS, BALANCE SHAFTS, BEARING CAPS, CAMSHAFTS, CONNECTING RODS, CRANKSHAFTS, EGR COOLERS, EGR VALVES, ENGINE CYLINDER BLOCKS AND CYLINDER HEADS, ENGINE TIMING CHAIN GUIDES AND TENSIONER ARMS, ENGINE COVERS, FUEL PUMPS, FUEL RAILS, GASKETS, IGNITION COILS, INTAKE MANIFOLDS, MECHANICAL SEALS, OIL COOLERS, OIL PANS, OIL PUMPS, OIL SEPARATORS, PISTON RINGS, SPROCKETS, TENSIONERS, WATER PUMPS, WINDAGE TRAYS AND REPLACEMENT PARTS THEREFOR
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Italy application number TO2014C00010 filed 01/15/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: AIR CLEANERS, ALTERNATORS, BEARINGS, CARBURETORS, EXHAUST PIPES, FUEL FILTERS, FUEL INJECTORS, MUFFLERS, OIL FILTERS, PISTONS, RADIATORS, TURBOCHARGERS; MOTOR VEHICLE ENGINE PARTS, NAMELY, AIR CLEANERS; MOTOR VEHICLE PARTS, NAMELY, ACTUATORS, BALANCE SHAFTS, BEARING CAPS, CAMSHAFTS, CONNECTING RODS, CRANKSHAFTS, EGR COOLERS, EGR VALVES, ENGINE CYLINDER BLOCKS AND CYLINDER HEADS, ENGINE TIMING CHAIN GUIDES AND TENSIONER ARMS, ENGINE COVERS, FUEL PUMPS, FUEL RAILS, GASKETS, IGNITION COILS, INTAKE MANIFOLDS, MECHANICAL SEALS, OIL COOLERS, OIL PANS, OIL PUMPS, OIL SEPARATORS, PISTON RINGS, SPROCKETS, TENSIONERS, WATER PUMPS, WINDAGE TRAYS AND REPLACEMENT PARTS THEREFOR; ALTERNATORS; ENGINE BEARINGS; CARBURETORS, AUTOMOTIVE EXHAUST PIPES, FUEL FILTERS, FUEL INJECTORS, ENGINE OR MOTOR MUFFLERS, OIL FILTERS; PISTONS FOR AUTOMOBILE ENGINES; RADIATORS FOR VEHICLES; TURBOCHARGERS FOR AUTOMOBILES; MOTOR VEHICLE PARTS, NAMELY, HYDRAULIC AND PNEUMATIC LINEAR AND VALVE ACTUATORS, BALANCE SHAFTS FOR PUMPS, ENGINE BEARING CAPS, ENGINE CAMSHAFTS, CONNECTING RODS FOR INTERNAL COMBUSTION LAND VEHICLE ENGINES, CRANKSHAFTS FOR AUTOMOBILE ENGINES, EGR COOLERS AS ENGINE PARTS, EGR VALVES AS ENGINE PARTS, ENGINE CYLINDER BLOCKS AND CYLINDER HEADS, ENGINE TIMING CHAIN GUIDES AND TENSIONER ARMS, ENGINE COVERS, FUEL PUMPS, FUEL RAILS, GASKETS FOR INTERNAL COMBUSTION ENGINES, IGNITION COILS, INTAKE MANIFOLDS, MECHANICAL SEALS, OIL COOLERS, OIL PANS, OIL PUMPS, OIL SEPARATORS, PISTON RINGS, ENGINE TIMING COMPONENTS IN THE NATURE OF CAM SPROCKETS, BELT TENSIONERS, WATER PUMPS, WINDAGE TRAYS FOR OIL PANS, AND REPLACEMENT PARTS THEREFORClass 007 for MOTOR VEHICLE ENGINE PARTS, NAMELY, AIR CLEANERS; ALTERNATORS; ENGINE BEARINGS; CARBURETORS, AUTOMOTIVE EXHAUST PIPES, FUEL FILTERS, FUEL INJECTORS, ENGINE OR MOTOR MUFFLERS, OIL FILTERS; PISTONS FOR AUTOMOBILE ENGINES; RADIATORS FOR VEHICLES; TURBOCHARGERS FOR AUTOMOBILES; MOTOR VEHICLE PARTS, NAMELY, HYDRAULIC AND PNEUMATIC LINEAR AND VALVE ACTUATORS, BALANCE SHAFTS FOR PUMPS, ENGINE BEARING CAPS, ENGINE CAMSHAFTS, CONNECTING RODS FOR INTERNAL COMBUSTION LAND VEHICLE ENGINES, CRANKSHAFTS FOR AUTOMOBILE ENGINES, EGR COOLERS AS ENGINE PARTS, EGR VALVES AS ENGINE PARTS, ENGINE CYLINDER BLOCKS AND CYLINDER HEADS, ENGINE TIMING CHAIN GUIDES AND TENSIONER ARMS, ENGINE COVERS, FUEL PUMPS, FUEL RAILS, GASKETS FOR INTERNAL COMBUSTION ENGINES, IGNITION COILS, INTAKE MANIFOLDS, MECHANICAL SEALS, OIL COOLERS, OIL PANS, OIL PUMPS, OIL SEPARATORS, PISTON RINGS, ENGINE TIMING COMPONENTS IN THE NATURE OF CAM SPROCKETS, BELT TENSIONERS, WATER PUMPS, WINDAGE TRAYS FOR OIL PANS, AND REPLACEMENT PARTS THEREFOR
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Italy application number TO2014C00010 filed 01/15/2014]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for MOTOR VEHICLE ENGINES; AXLES, BRAKES, CLUTCHES, DRIVE GEARS, DRIVE SHAFTS, TRANSMISSIONS; AUTOMOBILES; MOTOR VEHICLE ENGINE REPLACEMENT PARTS THEREFOR; MOTOR VEHICLE PARTS, NAMELY, DIFFERENTIAL GEARS AND PINIONS, UNIVERSAL JOINTS, WIRING HARNESSES AND REPLACEMENT PARTS THEREFOR; AUTOMOBILE STRUCTURAL PARTS THEREFOR
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: MOTOR VEHICLE ENGINES; AXLES, BRAKES, CLUTCHES, DRIVE GEARS, DRIVE SHAFTS, TRANSMISSIONS; LAND VEHICLE PARTS, NAMELY, AXLES, BRAKES, CLUTCHES, DRIVE GEARS, DRIVE SHAFTS, AND TRANSMISSIONS; AUTOMOBILES; MOTOR VEHICLE ENGINE REPLACEMENT PARTS THEREFOR; ENGINES FOR LAND VEHICLES; MOTOR VEHICLE PARTS, NAMELY, DIFFERENTIAL GEARS AND PINIONS, UNIVERSAL JOINTS, WIRING HARNESSES AND REPLACEMENT PARTS THEREFOR; AUTOMOBILE STRUCTURAL PARTS THEREFOR; AUTOMOBILES AND STRUCTURAL PARTS THEREFORClass 012 for MOTOR VEHICLE ENGINES; LAND VEHICLE PARTS, NAMELY, AXLES, BRAKES, CLUTCHES, DRIVE GEARS, DRIVE SHAFTS, AND TRANSMISSIONS; AUTOMOBILES; ENGINES FOR LAND VEHICLES; MOTOR VEHICLE PARTS, NAMELY, DIFFERENTIAL GEARS AND PINIONS, UNIVERSAL JOINTS, WIRING HARNESSES AND REPLACEMENT PARTS THEREFOR; AUTOMOBILES AND STRUCTURAL PARTS THEREFOR
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LEO M. LOUGHLIN
ROTHWELL, FIGG, ERNST & MANBECK, PC
607 14TH ST NW STE 800
WASHINGTON
District of Columbia (DC)
US
20005-2005

Proposed:
LEO M. LOUGHLIN of ROTHWELL, FIGG, ERNST & MANBECK, PC, having an address of
607 14TH ST NW STE 800 WASHINGTON, District of Columbia 20005-2005
United States
PTO-TM-Email@rfem.com
202-783-6040
202-783-6031
The docket/reference number is 1570-797 .



ADDITIONAL STATEMENTS
Miscellaneous Statement
Please maintain the dual basis.


SIGNATURE(S)
Response Signature
Signature: /Leo M. Loughlin/     Date: 01/28/2015
Signatory's Name: Leo M. Loughlin
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202-783-6040

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.

Mailing Address:    LEO M. LOUGHLIN
   ROTHWELL, FIGG, ERNST & MANBECK, PC
   607 14TH ST NW STE 800
   WASHINGTON, District of Columbia 20005-2005
        
Serial Number: 86256185
Internet Transmission Date: Thu Jan 29 13:28:38 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2015012913283864
2842-86256185-530eb2e6321fc63162991a8363
297bacad79f73debcd5a45fd939c425ef956a6-N
/A-N/A-20150128144151832441