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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87174324 EXTREME TOOL LIFE(Standard Characters, see http://uspto.report/TM/87174324/mark.png) has been amended as follows:

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

Applicant submits the specimen provided with its Statement of Use filed on July 31, 2018 was not digitally altered in any way. The specimen was not created for the submission of the application or the Statement of Use. The specimen shows the applicant's product as it is currently being sold to consumers. To further demonstrate that the previously supplied specimen was not digitally altered, Applicant submits herewith additional packaging which bears the identical image that was submitted as a specimen with the Statement of Use (See Exhibit A). In addition, the Examiner is invited to view the website: http://www.toolstoday.com/5-piece-cnc-solid-carbide-spektra-extreme- tool-life-coated-compression-spiral-for-mdflaminate-router-bit-collection.html to view imagery that is identical to the specimen submitted on July 31, 2018 (See Exhibit B). Accordingly, it is clear that the previously supplied specimen was not digitally altered. Further, Applicant submits the term COATING is a descriptive term that merely describes the model/grade of the micro thin coating that is applied to its product. The additional photographs provided clearly show the use of the term COATING as just a feature of the product and not a part of the product name. Also, the website noted by the Applicant clearly describes the "naCo coating" feature of the EXTREME TOOL LIFE product. As such, Applicant submits the term COATING is merely a descriptive term to indicate that the model/grade of the coating applied to its product. Applicant requests the acceptance and approval of the Statement of Use.

EVIDENCE
Evidence in the nature of Exhibits A and B has been attached.
Original PDF file:
evi_388818226-20190319144155512999_._EXTREME_TOOL_LIFE_COATING_-_Exhibits_A_and_B.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for cutting attachments for power tools, namely, saw blades, router bits, drill bits, and boring bits
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.

In International Class 007, the mark was first used at least as early as 00/00/1000 and first used in commerce at least as early as 00/00/1000 .

Proposed: Class 007 for cutting attachments for power tools, namely, saw blades, router bits, drill bits, and boring bits

Deleted Filing Basis: 1(b)
In International Class 007, the mark was first used at least as early as 04/00/2017 . and first used in commerce at least as early as 04/00/2017 .

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: /Paul D. Ackerman/      Date: 03/19/2019
Signatory's Name: Paul D. Ackerman
Signatory's Position: Attorney of Record
Signatory's Phone Number: 2123091000


Response Signature
Signature: /Paul D. Ackerman/     Date: 03/19/2019
Signatory's Name: Paul D. Ackerman
Signatory's Position: Attorney of Record

Signatory's Phone Number: 2123091000

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: 87174324
Internet Transmission Date: Tue Mar 19 16:04:05 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190319160405269
513-87174324-620dc3fc46518b8478c34e0ea9a
c5d2e293f7a3be1aa3d6f2d61aba27f21cfab5a-
N/A-N/A-20190319144155512999