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 |
87129256 |
LAW OFFICE ASSIGNED |
LAW OFFICE 104 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/87129256/mark.png |
LITERAL ELEMENT |
OREGON |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the word OREGON in block lettering on an oval background. |
GOODS AND/OR SERVICES SECTION (007)(current) |
INTERNATIONAL CLASS |
007 |
DESCRIPTION |
Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, edgers, log splitters, post hole diggers, centrifugal pumps
and replacement parts therefor; structural parts and fittings for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters,
fuel lines, fuel filters, fuel caps and valves, motors, gaskets, hoses and hose reels, wheels, rollers, casters, pistons, straps, carburetors, throttle controls, lines, starters, mufflers and spark
plugs; machine parts, namely, bearings, bushings, cables, plugs and clips, idlers and pulleys; belts for machines; clutches for machines; drive chains for machines; drive parts for machines, namely,
sprockets, gears, drive pins, drive discs, rings, rollers, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads, blades and trimmer line; lawn mower
parts, namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and accessories and replacement parts therefor; grinding wheels; electric rivet spinners; snow
thrower parts, namely, augurs, scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands for machines; tire changers; mower sulkies |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (007)(proposed) |
INTERNATIONAL CLASS |
007 |
TRACKED TEXT DESCRIPTION |
Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, edgers, log splitters, post
hole diggers, centrifugal pumps and replacement parts therefor; Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, lawn and garden
edgers, log splitters, post hole diggers in the nature of powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor; structural parts and fittings for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters,
fuel caps and valves, motors, gaskets, hoses and hose reels, wheels, rollers, casters, pistons, straps, carburetors, throttle controls, lines, starters, mufflers and spark plugs; structural parts and fittings for outdoor power equipment and parts and fittings for internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar
covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel caps and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons
for engines, tie straps for saw chain, carburetors, throttle controls for outdoor power equipment in the nature of replacement throttle levers and cables, starters for motors and engines, engine
mufflers and spark plugs; machine parts, namely, bearings, bushings, cables, plugs and clips, idlers and pulleys; machine
parts, namely, bearings, bushings, control cables for outdoor equipment, idling and pulleys being parts of machines; belts for machines; clutches
for machines; drive chains for machines; drive chains being parts of machines; drive parts for machines, namely, sprockets, gears, drive pins, drive discs, rings, rollers, spindle assemblies and jackshafts; drive parts for
machines, namely, idler sprockets, gears, drive pins, drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts; parts
for power operated edgers, namely, shafts, trimmer heads, blades and trimmer line; parts for power operated edgers, namely, shafts, trimmer heads and
blades; lawn mower parts, namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and
accessories and replacement parts therefor; electric bench grinders, electric mower blade grinders, and grinder accessories, namely, grinding wheels, grinding
stones, wheel dressing tools, grinder stands, mulching blade adaptors, grit collectors and replacement parts therefor; grinding wheels; power-operated grinding wheels; electric rivet spinners; electric rivet spinners, namely,
machines for joining loops of saw chain; snow thrower parts, namely, augurs, scraper bars, shave plates, skids, paddles; snow thrower replacement parts, namely, augurs, scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands
for machines; tire changers; manual tire changer machines for outdoor power equipment tires; mower sulkies |
FINAL DESCRIPTION |
Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, lawn and garden edgers, log splitters, post hole diggers in
the nature of powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor; structural parts and fittings for outdoor power equipment and parts and
fittings for internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel
filters, fuel caps and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons for engines, tie straps for saw chain, carburetors, throttle controls for outdoor power
equipment in the nature of replacement throttle levers and cables, starters for motors and engines, engine mufflers and spark plugs; machine parts, namely, bearings, bushings, control cables for
outdoor equipment, idling and pulleys being parts of machines; belts for machines; clutches for machines; drive chains being parts of machines; drive parts for machines, namely, idler sprockets,
gears, drive pins, drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads and blades; lawn
mower parts, namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and grinder accessories, namely, grinding wheels, grinding stones, wheel dressing tools,
grinder stands, mulching blade adaptors, grit collectors and replacement parts therefor; power-operated grinding wheels; electric rivet spinners, namely, machines for joining loops of saw chain; snow
thrower replacement parts, namely, augurs, scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands for machines; manual tire changer machines for outdoor power equipment
tires; mower sulkies |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (022)(class added) |
INTERNATIONAL CLASS |
022 |
DESCRIPTION |
Non-metal grass and weed trimmer line comprised primarily of nylon, plastic, polymer and composite materials |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) |
The term OREGON 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 |
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use |
OREGON 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. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
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 |
05/02/2017 |
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 |
05/02/2017 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue May 02 12:21:32 EDT 2017 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20170502122132493565-871
29256-59045f06537ed6b7e35
d4e1c396c1ae928c4d4db1a23
9ab71cb204093aed9d43-DA-1
0746-20170502120031404080 |
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.
87129256 OREGON (Stylized and/or with Design, see http://uspto.report/TM/87129256/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 Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, edgers, log splitters, post hole diggers, centrifugal pumps and replacement parts therefor;
structural parts and fittings for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel
caps and valves, motors, gaskets, hoses and hose reels, wheels, rollers, casters, pistons, straps, carburetors, throttle controls, lines, starters, mufflers and spark plugs; machine parts, namely,
bearings, bushings, cables, plugs and clips, idlers and pulleys; belts for machines; clutches for machines; drive chains for machines; drive parts for machines, namely, sprockets, gears, drive pins,
drive discs, rings, rollers, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads, blades and trimmer line; lawn mower parts, namely, blades, grass bags,
and decks; electric bench grinders, electric mower blade grinders, and accessories and replacement parts therefor; grinding wheels; electric rivet spinners; snow thrower parts, namely, augurs,
scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands for machines; tire changers; mower sulkies
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: Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, edgers, log splitters, post hole diggers, centrifugal pumps
and replacement parts therefor;
Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, lawn and garden edgers, log splitters, post hole
diggers in the nature of powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor;
structural parts and
fittings for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel caps and valves,
motors, gaskets, hoses and hose reels, wheels, rollers, casters, pistons, straps, carburetors, throttle controls, lines, starters, mufflers and spark plugs;
structural parts and fittings for outdoor power equipment and parts and fittings for internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip
guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel caps and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons for engines,
tie straps for saw chain, carburetors, throttle controls for outdoor power equipment in the nature of replacement throttle levers and cables, starters for motors and engines, engine mufflers and
spark plugs;
machine parts, namely, bearings, bushings, cables, plugs and clips, idlers and pulleys;
machine parts,
namely, bearings, bushings, control cables for outdoor equipment, idling and pulleys being parts of machines;
belts for machines;
clutches for
machines;
drive chains for machines;
drive chains being parts of machines;
drive parts for machines, namely, sprockets, gears, drive pins, drive discs, rings, rollers, spindle assemblies and jackshafts;
drive parts for
machines, namely, idler sprockets, gears, drive pins, drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts;
parts
for power operated edgers, namely, shafts, trimmer heads, blades and trimmer line;
parts for power operated edgers, namely, shafts, trimmer heads and
blades;
lawn mower parts, namely, blades, grass bags, and decks;
electric bench grinders, electric mower blade grinders, and
accessories and replacement parts therefor;
electric bench grinders, electric mower blade grinders, and grinder accessories, namely, grinding wheels, grinding
stones, wheel dressing tools, grinder stands, mulching blade adaptors, grit collectors and replacement parts therefor;
grinding wheels;
power-operated grinding wheels;
electric rivet spinners;
electric rivet spinners, namely,
machines for joining loops of saw chain;
snow thrower parts, namely, augurs, scraper bars, shave plates, skids, paddles;
snow thrower replacement parts, namely, augurs, scraper bars, shave plates, skids, paddles;
fitted tarps for power machinery;
stands
for machines;
tire changers;
manual tire changer machines for outdoor power equipment tires;
mower sulkiesClass 007 for Outdoor power equipment, namely, chain saws, hedge trimmers, line trimmers, lawn and garden edgers, log splitters, post hole diggers in the nature of
powered hole openers used to enlarge holes in the ground, centrifugal pumps and replacement parts therefor; structural parts and fittings for outdoor power equipment and parts and fittings for
internal combustion engines for outdoor power equipment, namely, saw chain, guide bars, bar covers, tip guards, sprockets for chain saws, air filters, oil filters, fuel lines, fuel filters, fuel caps
and valves, motors, gaskets, replacement wheels and deck rollers for lawn mowers, pistons for engines, tie straps for saw chain, carburetors, throttle controls for outdoor power equipment in the
nature of replacement throttle levers and cables, starters for motors and engines, engine mufflers and spark plugs; machine parts, namely, bearings, bushings, control cables for outdoor equipment,
idling and pulleys being parts of machines; belts for machines; clutches for machines; drive chains being parts of machines; drive parts for machines, namely, idler sprockets, gears, drive pins,
drive discs, drive rings, roller chains being parts of machines, spindle assemblies and jackshafts; parts for power operated edgers, namely, shafts, trimmer heads and blades; lawn mower parts,
namely, blades, grass bags, and decks; electric bench grinders, electric mower blade grinders, and grinder accessories, namely, grinding wheels, grinding stones, wheel dressing tools, grinder stands,
mulching blade adaptors, grit collectors and replacement parts therefor; power-operated grinding wheels; electric rivet spinners, namely, machines for joining loops of saw chain; snow thrower
replacement parts, namely, augurs, scraper bars, shave plates, skids, paddles; fitted tarps for power machinery; stands for machines; manual tire changer machines for outdoor power equipment tires;
mower sulkies
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 022 for Non-metal grass and weed trimmer line comprised primarily of nylon, plastic, polymer and composite materials
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.
ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
The term OREGON 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
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
OREGON 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.
FEE(S)
Fee(s) in the amount of $275 is being submitted.
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: 05/02/2017
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: 05/02/2017
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.
RAM Sale Number: 87129256
RAM Accounting Date: 05/02/2017
Serial Number: 87129256
Internet Transmission Date: Tue May 02 12:21:32 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20170502122132
493565-87129256-59045f06537ed6b7e35d4e1c
396c1ae928c4d4db1a239ab71cb204093aed9d43
-DA-10746-20170502120031404080