Response to Office Action

OREGON

OREGON TOOL, INC.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87128932
LAW OFFICE ASSIGNED LAW OFFICE 112
MARK SECTION
MARK http://uspto.report/TM/87128932/mark.png
LITERAL ELEMENT OREGON
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 022
DESCRIPTION Cable ties; unfitted tarps for power machinery
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 00/00/2002
        FIRST USE IN COMMERCE DATE At least as early as 00/00/2002
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 022
TRACKED TEXT DESCRIPTION
Cable ties; Plastic cable ties for home or garden use; unfitted tarps for power machinery
FINAL DESCRIPTION
Plastic cable ties for home or garden use; unfitted tarps for power machinery
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 00/00/2002
       FIRST USE IN COMMERCE DATE At least as early as 00/00/2002
ADDITIONAL STATEMENTS SECTION
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s) The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 0602338, 4459489, 3789762, 4376750, 2889236, 2630993 and 3850871
SIGNATURE SECTION
DECLARATION SIGNATURE /Jeffrey P. Dunning/
SIGNATORY'S NAME Jeffrey P. Dunning
SIGNATORY'S POSITION Attorney of record, Illinois bar member
SIGNATORY'S PHONE NUMBER 312.456.8400
DATE SIGNED 05/01/2017
RESPONSE SIGNATURE /Jeffrey P. Dunning/
SIGNATORY'S NAME Jeffrey P. Dunning
SIGNATORY'S POSITION Attorney of record, Illinois bar member
SIGNATORY'S PHONE NUMBER 312.456.8400
DATE SIGNED 05/01/2017
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon May 01 15:09:19 EDT 2017
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XXX
-20170501150919481524-871
28932-59077e87654f6e5237c
2e6421c2ffee93f95816ec153
a5de599490fdc68f83ba57-N/
A-N/A-2017050115061039622
6



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. 87128932 OREGON(Standard Characters, see http://uspto.report/TM/87128932/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 022 for Cable ties; unfitted tarps for power machinery
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 00/00/2002 and first used in commerce at least as early as 00/00/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Cable ties; Plastic cable ties for home or garden use; unfitted tarps for power machineryClass 022 for Plastic cable ties for home or garden use; unfitted tarps for power machinery
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 00/00/2002 and first used in commerce at least as early as 00/00/2002 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 0602338, 4459489, 3789762, 4376750, 2889236, 2630993 and 3850871


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: /Jeffrey P. Dunning/      Date: 05/01/2017
Signatory's Name: Jeffrey P. Dunning
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 312.456.8400


Response Signature
Signature: /Jeffrey P. Dunning/     Date: 05/01/2017
Signatory's Name: Jeffrey P. Dunning
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312.456.8400

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: 87128932
Internet Transmission Date: Mon May 01 15:09:19 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20170501150919
481524-87128932-59077e87654f6e5237c2e642
1c2ffee93f95816ec153a5de599490fdc68f83ba
57-N/A-N/A-20170501150610396226



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