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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87311828 |
LAW OFFICE ASSIGNED |
LAW OFFICE 106 |
MARK SECTION |
MARK |
http://uspto.report/TM/87311828/mark.png |
LITERAL ELEMENT |
MAXIMUM |
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 (006)(current) |
INTERNATIONAL CLASS |
006 |
DESCRIPTION |
Metal tool storage systems, namely, tool boxes and tool cabinets |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
GOODS AND/OR SERVICES SECTION (006)(proposed) |
INTERNATIONAL CLASS |
006 |
TRACKED TEXT DESCRIPTION |
Metal tool storage systems, namely, tool boxes and tool cabinets; Metal tool storage systems, namely, tool boxes |
FINAL DESCRIPTION |
Metal tool storage systems, namely, tool boxes |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA664415 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
05/17/2006 |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (007)(current) |
INTERNATIONAL CLASS |
007 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and
circular saws; stationary bench type power tools, namely, drill press; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw
blades, screwdriver bits, wood drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks; (Based on TMA664415; Registered
05/17/2006): Electric planes; power-driven wrenches; electric hammers; power-operated screwdrivers; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; ratchet screwdrivers,
namely, power-operated ratchet screwdrivers; mechanics hand tools, namely, power-operated socket sets and wrenches; bench type power tools, namely, table saws; power tool accessories, namely, saw
blades; carpenter's hand tools namely, power-operated palm sanders; carpenter's hand tools namely, power-operated angle grinders and power-operated routers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
GOODS AND/OR SERVICES SECTION (007)(proposed) |
INTERNATIONAL CLASS |
007 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and
circular saws; stationary bench type power tools, namely, drill press; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw
blades, screwdriver bits, wood drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks; (Based on TMA664415; Registered
05/17/2006): Electric planes; power-driven wrenches; electric hammers; power-operated screwdrivers; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; ratchet screwdrivers,
namely, power-operated ratchet screwdrivers; mechanics hand tools, namely, power-operated socket sets and wrenches; bench type power tools, namely, table saws; power tool accessories, namely, saw
blades; carpenter's hand tools namely, power-operated palm sanders; carpenter's hand tools namely, power-operated angle grinders and power-operated routers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (008)(current) |
INTERNATIONAL CLASS |
008 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely,
chisels; hand-operated wrenches; wrench holders; hand-operated hammers; screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely,
hand-operated ratchet screwdrivers; tap and die sets; (Based on TMA664415; Registered 05/17/2006): Mechanics hand tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely,
hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand tools namely, hand-operated
angle grinders |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
GOODS AND/OR SERVICES SECTION (008)(proposed) |
INTERNATIONAL CLASS |
008 |
TRACKED TEXT DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Hand tools, namely, handsaws, utility knives,
planes; hand-operated tools, namely, chisels; hand-operated wrenches; wrench holders; hand-operated wrench holders; hand-operated hammers; screwdrivers; hand
tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely,
hand-operated ratchet screwdrivers; tap and die sets; (Based on TMA664415; Registered 05/17/2006): Mechanics hand
tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps;
carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand
tools namely, hand-operated angle grinders |
FINAL DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely,
chisels; hand-operated wrenches; hand-operated wrench holders; hand-operated hammers; hand tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet
wrenches; ratchet screwdrivers, namely, hand-operated ratchet screwdrivers; tap and die sets; (Based on TMA664415; Registered 05/17/2006): Mechanics hand tools, namely, hand-operated socket sets and
wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders;
carpenter's hand tools namely, hand-operated angle grinders |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Tape measures; (Based on TMA664415; Registered 05/17/2006): Carpenter's hand tools namely,
levels |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Tape measures; (Based on TMA664415; Registered 05/17/2006): Carpenter's hand tools namely,
levels |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (020)(current) |
INTERNATIONAL CLASS |
020 |
DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Tool chests and cabinets; (Based on TMA664415; Registered 05/17/2006): Non-metal tool
storage systems, namely, tool boxes and tool cabinets |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
GOODS AND/OR SERVICES SECTION (020)(proposed) |
INTERNATIONAL CLASS |
020 |
TRACKED TEXT DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Tool chests and cabinets;
Registered 05/17/2006): Tool chests and cabinets not of metal; (Based on TMA664415; Registered 05/17/2006):
Non-metal tool storage systems, namely, tool boxes and tool cabinets; metal tool cabinets |
FINAL DESCRIPTION |
(Based on TMA616266; Registered 05/17/2006): Tool chests and cabinets not of metal; (Based on TMA664415; Registered 05/17/2006):
Non-metal tool storage systems, namely, tool boxes and tool cabinets; metal tool cabinets |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
TMA616266 |
FOREIGN REGISTRATION
COUNTRY |
Canada |
FOREIGN REGISTRATION
DATE |
08/04/2004 |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
CORRESPONDENCE SECTION |
ORIGINAL ADDRESS |
ANDREW D. PRICE
VENABLE LLP
P.O. BOX 34385
WASHINGTON
District of Columbia
US
20043
|
NEW CORRESPONDENCE SECTION |
NAME |
ANDREW D. PRICE |
FIRM NAME |
VENABLE LLP |
DOCKET/REFERENCE NUMBER |
412115 |
STREET |
P.O. BOX 34385 |
CITY |
WASHINGTON |
STATE |
District of Columbia |
ZIP/POSTAL CODE |
20043-9998 |
COUNTRY |
United States |
PHONE |
202.344.8156 |
FAX |
202.344.8300 |
EMAIL |
trademarkdocket@venable.com;ADPrice@venable.com;HBMarkus@Venable.com;PJWyles@Venable.com |
AUTHORIZED EMAIL COMMUNICATION |
Yes |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Halle B. Markus/ |
SIGNATORY'S NAME |
Halle B. Markus |
SIGNATORY'S POSITION |
Associate Attorney, Venable LLP, DC Bar Member |
SIGNATORY'S PHONE NUMBER |
202.344.4725 |
DATE SIGNED |
04/30/2018 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Apr 30 17:56:16 EDT 2018 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20180430175616575828-8731
1828-510c60fcce8e1f5213d3
cc5ec6d744782fee2d127cbe4
cc2159a9f46f3044ad5-N/A-N
/A-20180430174113120446 |
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.
87311828 MAXIMUM(Standard Characters, see http://uspto.report/TM/87311828/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 006 for Metal tool storage systems, namely, tool boxes and tool cabinets
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.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Metal tool storage systems, namely, tool boxes and tool cabinets;
Metal tool storage systems,
namely, tool boxesClass 006 for Metal tool storage systems, namely, tool boxes
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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA664415 registered 05/17/2006
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for (Based on TMA616266; Registered 05/17/2006): Portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and circular saws; stationary bench type
power tools, namely, drill press; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver bits, wood
drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks; (Based on TMA664415; Registered 05/17/2006): Electric planes;
power-driven wrenches; electric hammers; power-operated screwdrivers; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; ratchet screwdrivers, namely, power-operated ratchet
screwdrivers; mechanics hand tools, namely, power-operated socket sets and wrenches; bench type power tools, namely, table saws; power tool accessories, namely, saw blades; carpenter's hand tools
namely, power-operated palm sanders; carpenter's hand tools namely, power-operated angle grinders and power-operated routers
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.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed: Class 007 for (Based on TMA616266; Registered 05/17/2006): Portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and circular saws; stationary bench
type power tools, namely, drill press; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver bits, wood
drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks; (Based on TMA664415; Registered 05/17/2006): Electric planes;
power-driven wrenches; electric hammers; power-operated screwdrivers; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; ratchet screwdrivers, namely, power-operated ratchet
screwdrivers; mechanics hand tools, namely, power-operated socket sets and wrenches; bench type power tools, namely, table saws; power tool accessories, namely, saw blades; carpenter's hand tools
namely, power-operated palm sanders; carpenter's hand tools namely, power-operated angle grinders and power-operated routers
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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for (Based on TMA616266; Registered 05/17/2006): Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely, chisels; hand-operated wrenches; wrench
holders; hand-operated hammers; screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely, hand-operated ratchet screwdrivers; tap
and die sets; (Based on TMA664415; Registered 05/17/2006): Mechanics hand tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools
namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand tools namely, hand-operated angle grinders
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.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: (Based on TMA616266;
Registered 05/17/2006): Hand tools, namely, handsaws, utility knives, planes;
hand-operated tools, namely, chisels;
hand-operated wrenches;
wrench holders;
hand-operated wrench holders;
hand-operated hammers;
screwdrivers;
hand tools, namely,
screwdrivers;
non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches;
ratchet screwdrivers, namely, hand-operated
ratchet screwdrivers;
tap and die sets;
(Based on TMA664415;
Registered 05/17/2006): Mechanics hand tools, namely,
hand-operated socket sets and wrenches;
carpenter's hand tools namely, hacksaws;
carpenter's hand tools namely, clamps;
carpenter's hand tools namely, wire cutters;
carpenter's hand tools namely, hand-operated palm sanders;
carpenter's hand tools namely,
hand-operated angle grindersClass 008 for (Based on TMA616266; Registered 05/17/2006): Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely, chisels; hand-operated
wrenches; hand-operated wrench holders; hand-operated hammers; hand tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet
screwdrivers, namely, hand-operated ratchet screwdrivers; tap and die sets; (Based on TMA664415; Registered 05/17/2006): Mechanics hand tools, namely, hand-operated socket sets and wrenches;
carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's
hand tools namely, hand-operated angle grinders
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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for (Based on TMA616266; Registered 05/17/2006): Tape measures; (Based on TMA664415; Registered 05/17/2006): Carpenter's hand tools namely, levels
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.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed: Class 009 for (Based on TMA616266; Registered 05/17/2006): Tape measures; (Based on TMA664415; Registered 05/17/2006): Carpenter's hand tools namely, levels
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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for (Based on TMA616266; Registered 05/17/2006): Tool chests and cabinets; (Based on TMA664415; Registered 05/17/2006): Non-metal tool storage systems, namely, tool boxes
and tool cabinets
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.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: (Based on TMA616266;
Registered 05/17/2006): Tool chests and cabinets;
Registered 05/17/2006): Tool chests and cabinets not of metal;
(Based on TMA664415;
Registered 05/17/2006): Non-metal tool storage systems,
namely, tool boxes and tool cabinets;
metal tool cabinetsClass 020 for (Based on TMA616266; Registered 05/17/2006): Tool chests and cabinets not of
metal; (Based on TMA664415; Registered 05/17/2006): Non-metal tool storage systems, namely, tool boxes and tool cabinets; metal tool cabinets
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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA616266 registered 08/04/2004
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
ANDREW D. PRICE
VENABLE LLP
P.O. BOX 34385
WASHINGTON
District of Columbia
US
20043
Proposed:
ANDREW D. PRICE of VENABLE LLP, having an address of
P.O. BOX 34385 WASHINGTON, District of Columbia 20043-9998
United States
trademarkdocket@venable.com;ADPrice@venable.com;HBMarkus@Venable.com;PJWyles@Venable.com
202.344.8156
202.344.8300
The docket/reference number is 412115 .
SIGNATURE(S)
Response Signature
Signature: /Halle B. Markus/ Date: 04/30/2018
Signatory's Name: Halle B. Markus
Signatory's Position: Associate Attorney, Venable LLP, DC Bar Member
Signatory's Phone Number: 202.344.4725
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.
Mailing Address: ANDREW D. PRICE
VENABLE LLP
P.O. BOX 34385
WASHINGTON, District of Columbia 20043-9998
Serial Number: 87311828
Internet Transmission Date: Mon Apr 30 17:56:16 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201804301756165
75828-87311828-510c60fcce8e1f5213d3cc5ec
6d744782fee2d127cbe4cc2159a9f46f3044ad5-
N/A-N/A-20180430174113120446