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. 87333597 XR(Standard Characters, see http://uspto.report/TM/87333597/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 Oscillating power tool saw blades, oscillating power tool cutting blades, and oscillating power tool abrasive tools, each for use with oscillating power tools
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 05/15/2017 and first used in commerce at least as early as 05/15/2017 .

Proposed: Class 007 for Oscillating power tool saw blades, oscillating power tool cutting blades, and oscillating power tool abrasive tools, each for use with oscillating power tools

Deleted Filing Basis: 1(b)
In International Class 007, the mark was first used at least as early as 05/15/2017 . and first used in commerce at least as early as 05/15/2017 .

Applicant hereby submits one(or more) specimen(s) for Class 007 . The specimen(s) submitted consists of Samples of Use of trademark in connection with sale of said goods .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-50237137210-20180829141857119485_._ating_Tool_Kit__1_Battery_Included__at_Lowes.com_XR_Specimen.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
SCOTT B. MARKOW
STANLEY BLACK & DECKER INC.
701 E. JOPPA ROAD
MAIL STOP TW199
TOWSON
Maryland
US
21286

Proposed:
Scott B. Markow of Stanley Black & Decker, Inc., having an address of
Patent Dept MR-045 6201 Greenleigh Avenue Middle River, Maryland 21220
United States
sue.haslbeck@sbdinc.com;sharon.gilden@sbdinc.com
4106309428
4106309462
The docket/reference number is SM/31907 .



ADDITIONAL STATEMENTS
Miscellaneous Statement
The originally filed specimen has been rejected on the basis that it shows the mark XR used in conjunction with DEWALT. While Applicant does not agree with this rejection, Applicant submits herewith a new specimen. As shown in the new specimen, the mark XR is sometimes used in conjunction with the DEWALT trademark, but is also often used separate from the DEWALT brand. The attached new specimen shows the XR mark being used both in conjunction with DEWALT (as shown in the name of the product on this website) and separately from DEWALT (as shown on page 2 of the specimen, under Product Information, which reads "The DCS355D1 20V MAX XR lithium ion oscillating multi-tool kit."). Regarding the use separate from DEWALT, please note that 20V MAX is not a trademark, but instead refers to the maximum rated voltage of the oscillating power tool included with this kit. Accordingly, Applicant respectfully requests that this new specimen be accepted.


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: /Scott B. Markow/      Date: 08/30/2018
Signatory's Name: Scott B. Markow
Signatory's Position: Senior Group Patent Counsel
Signatory's Phone Number: 410 630 9429


Response Signature
Signature: /Scott B. Markow/     Date: 08/30/2018
Signatory's Name: Scott B. Markow
Signatory's Position: Senior Group Patent Counsel

Signatory's Phone Number: 410 630 9429

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:    Scott B. Markow
   Stanley Black & Decker, Inc.
   Patent Dept MR-045
   6201 Greenleigh Avenue
   Middle River, Maryland 21220
        
Serial Number: 87333597
Internet Transmission Date: Thu Aug 30 09:36:13 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201808300936138
58791-87333597-6107a33188211aa1ba4598a7e
f8419a87e117c12ff4b2705f9f7a1ab4bb9de8d4
-N/A-N/A-20180830090959222977