TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 87178167 RMSTATOR (Stylized and/or with Design, see http://uspto.report/TM/87178167/mark.png) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Canada registration number TMA991462 registered 02/27/2018, with a renewal date of 02/27/2033 and an expiration date of __________ , and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_16221686235-140959470_._CIPO_Certificate_of_Registration_-_TMA991_462_-_RMSTATOR.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Comment(s)/Remark(s):
The attached .pdf copy of a complete response includes translations of the color claim, services listing, and claim (filing basis) completed by the undersigned attorney, whose signature in the .pdf document certifies that he believes it to be true and correct translation.CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail and online store services featuring parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1783665 filed 05/11/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Retail and online store services featuring parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches; Retail and online store services featuring parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches.Class 035 for Retail and online store services featuring parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches.
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1783665 filed 05/11/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Canada registration number TMA991462 registered 02/27/2018 with a renewal date of 02/27/2033 and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Custom manufacturing of parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1783665 filed 05/11/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 040 for Custom manufacturing of parts and electrical accessories for motorized sport or powersport vehicles, namely, stators, voltage regulators, voltage rectifiers, CDI electronics boxes, alternators, generators, steering motors, timing lights and timing sensors, back plates, charging kits, starter kits, connectors, ignition coils, harnesses, light bulbs, ignition coils, ignition keys, pulse sensors, lighting coils, distributors, distributor caps, spark plugs, ignition cables, ignition wires, starter brushes, starter pinions and armatures, starter solenoids and solenoid switches
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1783665 filed 05/11/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Canada registration number TMA991462 registered 02/27/2018 with a renewal date of 02/27/2033 and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.


ADDITIONAL STATEMENTS
Miscellaneous Statement
Attached to this electronic response is a full written response, in .pdf form. In the event that any response to any specific objection is omitted from the menu-driven electronic response, or in the event of any discrepancy between the electronic and written responses, Applicant intends that the written response will control. Applicant notes that the .pdf form response comprises a certification pertaining to translation of certain portions of the corresponding foreign registration from the French language.
Original PDF file:
mis-16221686235-20180802140959470288_._Response_to_OA__2018_08_02_-_resp_to_susp_notice.pdf
Converted PDF file(s) (3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3

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 amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU 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 application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; 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: for a trademark or service mark application, the applicant believes 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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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 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: /Matthew J. MARQUARDT/    Date: 08/02/2018
Signatory's Name: Matthew J. MARQUARDT
Signatory's Position: Attorney of record, member New York and Washington state bars
Signatory's Phone Number: 416-777-2393

Response Suspension Inquiry Signature
Signature: /Matthew J. MARQUARDT/     Date: 08/02/2018
Signatory's Name: Matthew J. MARQUARDT
Signatory's Position: Attorny of record, member Washington and New York State bars
Signatory's Phone Number: 416-777-2393

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 87178167
Internet Transmission Date: Thu Aug 02 14:25:37 EDT 2018
TEAS Stamp: USPTO/RSI-XXX.XXX.XX.XXX-201808021425379
51012-87178167-6105869db2c3df4b626d36ae0
aba989057f0edfcad94fe783522b7182c44c90-N
/A-N/A-20180802140959470288