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. 86397206 STERLING (Stylized and/or with Design, see http://uspto.report/TM/86397206/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 019 for Shielding; foundation and retention walls; lagging; lagging panels; shaft and tunnel lagging; solider pile lagging; custom lagging; mats; crane and access mats; timber mats; barge mats; outrigger mats; excavator mats; floater mats; transition mats; trestle mats; pilings; wedges; vessel saddles; pipe cradles; crating; dunnage; blocking lumber; earth retention lumber; pipe shims; chocks; cribbing; custom radius cut block supports; construction lumber; plywood and forming plywood; oriented strand boards; construction timber; creosote lumber; tunnel ties; metal brackets; marine plywood; pole barn steel; skids; crates; pallet boxes; strongboard; sheathing; pre-cut lumber; timbers; blocking; shoring; trailer boards
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: Shielding; Shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction; foundation and retention walls; retention walls made of wood for earth retention; lagging; lagging, namely, lumber configured for earth retention during excavation; lagging panels; lagging panels, namely, assembled wooden panels for earth retention during excavation; shaft and tunnel lagging; shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels; solider pile lagging; wooden ground protection mats, namely, crane mats, site access mats, and timber mats; custom lagging; barge mats, namely, timber mats configured to distribute weight of cargo; mats; outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes; crane and access mats; excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery; timber mats; floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments; barge mats; transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting; outrigger mats; trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges; excavator mats; pilings of wood; floater mats; vessel saddles, namely, large wooden timbers configured to secure and support curved vessels; transition mats; crating, namely, wooden boxes for shipment of articles; trestle mats; blocking lumber; pilings; earth retention lumber; wedges; custom radius cut block supports for supporting steel coils during shipment; vessel saddles; construction lumber; pipe cradles; plywood and forming plywood; crating; construction timber; dunnage; creosote lumber; tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations; marine plywood; pipe shims; pole barn steel; chocks; skids; cribbing; crates; custom radius cut block supports; pallet boxes; sheathing; pre-cut lumber; oriented strand boards; timbers; wheel chocks made primarily of wood; wooden wedges for securing articles; tunnel ties; wooden dunnage for securing or supporting articles; metal brackets; strongboard; blocking; shoring; trailer boardsClass 019 for Shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction; retention walls made of wood for earth retention; lagging, namely, lumber configured for earth retention during excavation; lagging panels, namely, assembled wooden panels for earth retention during excavation; shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels; wooden ground protection mats, namely, crane mats, site access mats, and timber mats; barge mats, namely, timber mats configured to distribute weight of cargo; outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes; excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery; floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments; transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting; trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges; pilings of wood; vessel saddles, namely, large wooden timbers configured to secure and support curved vessels; crating, namely, wooden boxes for shipment of articles; blocking lumber; earth retention lumber; custom radius cut block supports for supporting steel coils during shipment; construction lumber; plywood and forming plywood; construction timber; creosote lumber; tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations; marine plywood; pole barn steel; skids; crates; pallet boxes; sheathing; pre-cut lumber; timbers; wheel chocks made primarily of wood; wooden wedges for securing articles; wooden dunnage for securing or supporting articles
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 040 for Sawmill services; timber logging; timber felling and processing; custom manufacturing of lumber and timber products; mat rental, purchase, installation, extraction and removal; crate exporting; custom crating
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: Sawmill services; timber logging; timber felling and processing; custom manufacturing of lumber and timber products; custom manufacturing of lumber and timber products, namely, shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction, retention walls made of wood for earth retention, lagging, namely, lumber configured for earth retention during excavation, lagging panels, namely, assembled wooden panels for earth retention during excavation, shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels, wooden ground protection mats, namely, crane mats, site access mats, and timber mats, barge mats, namely, timber mats configured to distribute weight of cargo, outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes, excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery, floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments, transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting, trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges, pilings of wood, vessel saddles, namely, large wooden timbers configured to secure and support curved vessels, crating, namely, wooden boxes for shipment of articles, blocking lumber, earth retention lumber, custom radius cut block supports for supporting steel coils during shipment, construction lumber, construction timber, tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations, crates, pre-cut lumber, timbers, wheel chocks made primarily of wood, wooden wedges for securing articles, wooden dunnage for securing or supporting articles; mat rental, purchase, installation, extraction and removal; crate exporting; custom cratingClass 040 for Sawmill services; timber logging; timber felling and processing; custom manufacturing of lumber and timber products, namely, shielding, namely, lumber configured for protecting decks of bridges and to shield the environment below bridges during construction, retention walls made of wood for earth retention, lagging, namely, lumber configured for earth retention during excavation, lagging panels, namely, assembled wooden panels for earth retention during excavation, shaft and tunnel lagging, namely, lumber configured for earth retention for shafts and tunnels, wooden ground protection mats, namely, crane mats, site access mats, and timber mats, barge mats, namely, timber mats configured to distribute weight of cargo, outrigger mats, namely, wooden articles configured for load distribution under outrigger pads of mobile cranes, excavator mats, namely, wooden articles configured for ground protection and load distribution under excavation machinery, floater mats, namely, wooden articles configured to float on water and act as a portable work station or scaffold in marine environments, transition mats, namely, wooden articles configured to allow mobile equipment to transition onto other ground protection matting, trestle mats, namely, wooden articles configured as a temporary working surface on uncompleted bridges, pilings of wood, vessel saddles, namely, large wooden timbers configured to secure and support curved vessels, crating, namely, wooden boxes for shipment of articles, blocking lumber, earth retention lumber, custom radius cut block supports for supporting steel coils during shipment, construction lumber, construction timber, tunnel ties, namely, custom cut railroad ties for use in connection with tunnel boring operations, crates, pre-cut lumber, timbers, wheel chocks made primarily of wood, wooden wedges for securing articles, wooden dunnage for securing or supporting articles
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 hereby adds the following class of goods/services to the application:
New: Class 007 for pipe cradles
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 hereby adds the following class of goods/services to the application:
New: Class 012 for trailer boards
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 hereby adds the following class of goods/services to the application:
New: Class 037 for Rental of mats; installation of mats; removal of mats
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 hereby adds the following class of goods/services to the application:
New: Class 006 for metal brackets for joining lumber or timber members
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.

FEE(S)
Fee(s) in the amount of $1300 is being submitted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Thomas E. Williams/     Date: 06/30/2015
Signatory's Name: Thomas E. Williams
Signatory's Position: Attorney of Record, IL Bar Member

Signatory's Phone Number: 312.269.8000

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.

        
RAM Sale Number: 86397206
RAM Accounting Date: 07/01/2015
        
Serial Number: 86397206
Internet Transmission Date: Tue Jun 30 14:19:29 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2015063014192962
6039-86397206-5306e3bf02fe092e0714f2fe33
f4411f7806b44b2d97e9b5250da81e8896913d4-
DA-648-20150630141640463762