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. 86505857 SAN JAMAR(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86505857/large) has been amended as follows:

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

The Examining Attorney has objected to various descriptions of goods and placement of goods in particular classes.  Applicant has amended the description of goods substantially in accordance with the Examining Attorney’s suggestions as follows:

In class 9, “protective clothing” has been changed to “protective clothing for protecting against splashes of oil, grease and other food products” to specify the uses of the protective clothing.

In class 20, Applicant has added “Non-metal insulated containers for transporting food products for industrial and/or commercial purposes” and “portable plastic storage containers for storing food for industrial and/or commercial purposes” as suggested by the Examining Attorney.  Correspondingly, Applicant has deleted “Insulated containers for transporting food products” and “Portable plastic storage containers for storing food” from class 21.

In class 21 Applicant has modified the description “Food holders for use in the food service industry" to “Food holders namely, mitts for use in holding food as it is cut.”  This description was taken from Applicant’s recently allowed application (86072686) for the same goods.  Applicant has also modified "knife storage devices" to “knife storage devices namely knife racks.” Applicant notes that “knife racks” is not one of the terms suggested by the Examining Attorney.  However, none of the suggested terms truly fits the goods sold by Applicant under the mark. If the Examining Attorney has any questions or concerns about the use of “knife rack” to describe the goods, his attention is directed to http://www.sanjamar.com/product/saf-t-knife-station/ which shows the goods in question.

In view of the above-described amendments to the descriptions of goods, it is respectfully submitted that the present application is in condition for publication.  The Examining Attorney is urged to contact the submitting attorney if any questions remain.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Splashguards, namely, protective sleeves for protecting arms and legs from splashes of oil, grease and other food products; protective clothing; protective, cut resistant gloves; fire resistant gloves; gloves for protection against accidents; and protective metal gloves for meat cutting
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Splashguards, namely, protective sleeves for protecting arms and legs from splashes of oil, grease and other food products; protective clothing; protective clothing for protecting against splashes of oil, grease and other food products; protective, cut resistant gloves; fire resistant gloves; gloves for protection against accidents; and protective metal gloves for meat cuttingClass 009 for Splashguards, namely, protective sleeves for protecting arms and legs from splashes of oil, grease and other food products; protective clothing for protecting against splashes of oil, grease and other food products; protective, cut resistant gloves; fire resistant gloves; gloves for protection against accidents; and protective metal gloves for meat cutting
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Portable nonmetallic dispensers for disposable plastic gloves for use in the food service industry; portable nonmetallic dispensers for film and foil for use in the food service industry; and portable nonmetallic dispensers of chemically-treated nonmedical test strips for use in testing washing and sanitizing water and solutions; Non-metal dispensers for disposable wipes
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Portable nonmetallic dispensers for disposable plastic gloves for use in the food service industry; portable nonmetallic dispensers for film and foil for use in the food service industry; and portable nonmetallic dispensers of chemically-treated nonmedical test strips for use in testing washing and sanitizing water and solutions; Non-metal dispensers for disposable wipes; Non-metal insulated containers for transporting food products for industrial and/or commercial purposes; portable plastic storage containers for storing food for industrial and/or commercial purposesClass 020 for Portable nonmetallic dispensers for disposable plastic gloves for use in the food service industry; portable nonmetallic dispensers for film and foil for use in the food service industry; and portable nonmetallic dispensers of chemically-treated nonmedical test strips for use in testing washing and sanitizing water and solutions; Non-metal dispensers for disposable wipes; Non-metal insulated containers for transporting food products for industrial and/or commercial purposes; portable plastic storage containers for storing food for industrial and/or commercial purposes
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Squeeze bottles sold empty and dispensing pumps for sauces, dispensers for condiments, paper towels, toilet tissue, paper napkins, paper, foam and plastic beverage and condiment cups, cup lids and drinking straws, and compartmentalized containers for dispensing beverage garnishes; ice buckets; containers for ice; cutting boards; holders for cutting boards; dispensers for liquid soap; plastic buckets; cooling buckets for wine; and cold packs used to keep food and drink cold; Food holders for use in the food service industry; Non-stick, flexible cooking sheets; holding stands for cutting boards; guards for garbage receptacles, namely, garbage receptacle coverings for use in preventing utensils from being pushed into such receptacles; and tableware retriever devices in the nature of garbage receptacle coverings for use in retrieving utensils from articles being discarded or disposed; Hand held scoops and scoop holders for handling food and ice; Thermal insulated containers for food or beverages, namely, serving pans, crocks, pitchers, and dispensers; Insulated containers for transporting food products; hand held cooling wand designed to be filled with coolant and frozen, and used to cool hot food product; underlying mats for cutting boards; sanitized pails for non-food product use; Portable plastic storage containers for storing food; Food related utensils, namely, food and drink serving dishes and platters; rolling pins; nail brushes; plastic kitchen gloves; plastic guards for sinks, namely, a strainer utensil for use in preventing kitchen and household utensils from being damaged by the disposal; Knife storage devices; cups for use with cleaning compounds to clean the spindles of food product mixers; Beverage pitchers
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Squeeze bottles sold empty and dispensing pumps for sauces, dispensers for condiments, paper towels, toilet tissue, paper napkins, paper, foam and plastic beverage and condiment cups, cup lids and drinking straws, and compartmentalized containers for dispensing beverage garnishes; ice buckets; containers for ice; cutting boards; holders for cutting boards; dispensers for liquid soap; plastic buckets; cooling buckets for wine; and cold packs used to keep food and drink cold; Food holders for use in the food service industry; Food holders, namely mitts for use in holding food as it is cut; Non-stick, flexible cooking sheets; holding stands for cutting boards; guards for garbage receptacles, namely, garbage receptacle coverings for use in preventing utensils from being pushed into such receptacles; and tableware retriever devices in the nature of garbage receptacle coverings for use in retrieving utensils from articles being discarded or disposed; Hand held scoops and scoop holders for handling food and ice; Thermal insulated containers for food or beverages, namely, serving pans, crocks, pitchers, and dispensers; Insulated containers for transporting food products; hand held cooling wand designed to be filled with coolant and frozen, and used to cool hot food product; underlying mats for cutting boards; sanitized pails for non-food product use; Food related utensils, namely, food and drink serving dishes and platters; Portable plastic storage containers for storing food; rolling pins; nail brushes; plastic kitchen gloves; plastic guards for sinks, namely, a strainer utensil for use in preventing kitchen and household utensils from being damaged by the disposal; cups for use with cleaning compounds to clean the spindles of food product mixers; Beverage pitchers; Knife storage devices; knife storage devices namely knife racksClass 021 for Squeeze bottles sold empty and dispensing pumps for sauces, dispensers for condiments, paper towels, toilet tissue, paper napkins, paper, foam and plastic beverage and condiment cups, cup lids and drinking straws, and compartmentalized containers for dispensing beverage garnishes; ice buckets; containers for ice; cutting boards; holders for cutting boards; dispensers for liquid soap; plastic buckets; cooling buckets for wine; and cold packs used to keep food and drink cold; Food holders, namely mitts for use in holding food as it is cut; Non-stick, flexible cooking sheets; holding stands for cutting boards; guards for garbage receptacles, namely, garbage receptacle coverings for use in preventing utensils from being pushed into such receptacles; and tableware retriever devices in the nature of garbage receptacle coverings for use in retrieving utensils from articles being discarded or disposed; Hand held scoops and scoop holders for handling food and ice; Thermal insulated containers for food or beverages, namely, serving pans, crocks, pitchers, and dispensers; hand held cooling wand designed to be filled with coolant and frozen, and used to cool hot food product; underlying mats for cutting boards; sanitized pails for non-food product use; Food related utensils, namely, food and drink serving dishes and platters; rolling pins; nail brushes; plastic kitchen gloves; plastic guards for sinks, namely, a strainer utensil for use in preventing kitchen and household utensils from being damaged by the disposal; cups for use with cleaning compounds to clean the spindles of food product mixers; Beverage pitchers; knife storage devices namely knife racks
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 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Adam L. Brookman/     Date: 10/20/2015
Signatory's Name: Adam L. Brookman
Signatory's Position: Attorney of Record, WI Bar Member

Signatory's Phone Number: 414-225-9755

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: 86505857
Internet Transmission Date: Tue Oct 20 17:12:34 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201510201712340
82653-86505857-5403a2c5f3a756f4d1d44b894
8ed6a4a6f8be66ecb3fd3cc84bb3366fe62b9f3e
-N/A-N/A-20151020170812603479