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)

---

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. 87219100 RELIANCE(Standard Characters, see http://uspto.report/TM/87219100/mark.png) has been amended as follows:

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

U.S. Trademark Application Ser. No. 87/219,100

Trademark:  RELIANCE

Filed:  October 28, 2016

 

The following is responsive to the Office Action ("Action") mailed February 10, 2017.

 1.  Prior Filed Application

In the Action, the Examining Attorney referenced US Application Serial No. 79189009, which has not yet registered, as presenting a potential conflict with the present application.  Applicant makes no comment as to the potential conflict and instead reserves the right to do so should an actual rejection be made.

 2.  Identification of Goods

The Examining Attorney states that the identification of goods is indefinite and overly broad, specifically as it relates to the terms "engineered stone" and "solid surface."

 Applicant has proposed an amendment to the recitation of goods to the following:

 natural stone slabs, tiles, and mosaics; engineered stone in the nature of artificial stone slabs, tiles, and mosaics; solid surface slabs, tiles, and mosaics; porcelain slabs, tiles, and mosaics.

 The Examining Attorney will appreciate that in making this amendment, Applicant has clarified that "engineered stone" is "in the nature of artificial stone."  It is believed that this satisfies the Examiner's concern vis-à-vis the term "engineered stone."

As to the term "solid surface," Applicant traverses.  Solid surfaces are not equated with ceramic tile, but rather is its own industry defined term that is well understood and needs no clarifier in a trademark goods description.  For example, Wikipedia® defines "solids surface" as "a man-made material usually composed of a combination of marble dust, bauxite, acrylic, epoxy or polyester resins and pigments."  It is believed that this well-defined industry term need no clarification and reconsideration of the requirement is requested.

If the Examining Attorney has any questions or ongoing concerns, he is invited to contact the undersigned.

 

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for slabs, tile, and mosaics made of natural stone, engineered stone, solid surface, and porcelain
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: slabs, tile, and mosaics made of natural stone, engineered stone, solid surface, and porcelain; natural stone slabs, tiles, and mosaics; engineered stone in the nature of artificial stone slabs, tiles, and mosaics; solid surface slabs, tiles, and mosaics; porcelain slabs, tiles, and mosaicsClass 019 for natural stone slabs, tiles, and mosaics; engineered stone in the nature of artificial stone slabs, tiles, and mosaics; solid surface slabs, tiles, and mosaics; porcelain slabs, tiles, and mosaics
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.

SIGNATURE(S)
Response Signature
Signature: /scott e. charney/     Date: 08/10/2017
Signatory's Name: Scott E. Charney
Signatory's Position: Attorney of Record, New Jersey bar member

Signatory's Phone Number: 9087581374

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: 87219100
Internet Transmission Date: Thu Aug 10 09:32:45 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201708100932450
50684-87219100-510e154553984ebac821b25cc
2946b2bff8d3f362cdbe9cefa1b12b633ac33ed4
0-N/A-N/A-20170810090023908164