Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86761133 CARDONE ENGINEERED FOR SUSTAINABILITY (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86761133/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 007 for Pumps for motor vehicles, namely, water pumps, smog air pumps and vacuum pumps; motors for motor vehicles, namely, wiper motors, headlamp motors, window wiper motors, window lift motors, radiator cooling motors and tailgate motors; electric ignitions for vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.

Proposed: Class 007 for Pumps for motor vehicles, namely, water pumps, smog air pumps and vacuum pumps; motors for motor vehicles, namely, wiper motors, headlamp motors, window wiper motors, window lift motors, radiator cooling motors and tailgate motors; electric ignitions for vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 007 . The specimen(s) submitted consists of company website log-in page for customers to order goods and website page where customers can order goods by part number of the goods. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-204170203-20160129140752939265_._GINEERED_FOR_SUSTAINABILITY_-_example_of_use_-_website_pages.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Engine control computers and computer chips; electric mass airflow sensors; electric vane airflow meters; vehicle computers, namely, body control computers and prom chips; electric vehicle controls, namely, transmission modules, cruise control modules, air supply modules and anti-lock brake modules, radios and global positioning systems for motor vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.

Proposed: Class 009 for Engine control computers and computer chips; electric mass airflow sensors; electric vane airflow meters; vehicle computers, namely, body control computers and prom chips; electric vehicle controls, namely, transmission modules, cruise control modules, air supply modules and anti-lock brake modules, radios and global positioning systems for motor vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of company website log-in page for customers to order goods and website page where customers can order goods by part number of the goods. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-204170203-20160129140752939265_._GINEERED_FOR_SUSTAINABILITY_-_example_of_use_-_website_pages.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Automobile headlights and headlight assemblies; automobile tail lights and tail light assemblies
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.

Proposed: Class 011 for Automobile headlights and headlight assemblies; automobile tail lights and tail light assemblies
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 011 . The specimen(s) submitted consists of company website log-in page for customers to order goods and website page where customers can order goods by part number of the goods. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU2-204170203-20160129140752939265_._GINEERED_FOR_SUSTAINABILITY_-_example_of_use_-_website_pages.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Brake systems and brake parts for land vehicles, namely, brake master cylinders, power brake units, disc brake calipers, hydraulic units, loaded disk brake calipers and power brake booster packs; power steering systems and parts for land vehicles, namely, power steering pumps, steering gears, rack and pinion steering units, control valves, power cylinders, power steering filters; automobile fenders and bumpers; automobile grills, automobile body parts, namely, side panels, doors and door handles, hoods and rear view mirrors; armrests and seats, all for motor vehicles; drive shafts and propeller shafts, both for motor vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.

Proposed: Class 012 for Brake systems and brake parts for land vehicles, namely, brake master cylinders, power brake units, disc brake calipers, hydraulic units, loaded disk brake calipers and power brake booster packs; power steering systems and parts for land vehicles, namely, power steering pumps, steering gears, rack and pinion steering units, control valves, power cylinders, power steering filters; automobile fenders and bumpers; automobile grills, automobile body parts, namely, side panels, doors and door handles, hoods and rear view mirrors; armrests and seats, all for motor vehicles; drive shafts and propeller shafts, both for motor vehicles
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 04/23/2014 and first used in commerce at least as early as 07/00/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 012 . The specimen(s) submitted consists of company website log-in page for customers to order goods and website page where customers can order goods by part number of the goods. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU3-204170203-20160129140752939265_._GINEERED_FOR_SUSTAINABILITY_-_example_of_use_-_website_pages.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ENGINEERED FOR SUSTAINABILITY apart from the mark as shown.


Description of mark
The mark consists of the word "CARDONE" show in capital letters. Below the word "CARDONE" is double horizontal lines. Below the lines are the words "engineered for sustainability" shown in lower case letters.

Miscellaneous Statement
The description of the mark has been Voluntarily Amended as set forth above to conform to the drawing of the mark of the application.


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: /wdrewkastner/      Date: 01/29/2016
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, NY, NJ & DC Bar Member
Signatory's Phone Number: 212-973-8122


Response Signature
Signature: /wdrewkastner/     Date: 01/29/2016
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, NY, NJ and DC bar member

Signatory's Phone Number: 212-973-8122

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: 86761133
Internet Transmission Date: Fri Jan 29 15:18:49 EST 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20160129151849737
284-86761133-550bfca832767611878fe91a120
fd865f46ea64216e7fd7096423d36df5052eacd-
N/A-N/A-20160129140752939265