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)

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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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87361956 BENCHMARK(Standard Characters, see http://uspto.report/TM/87361956/mark.png) has been amended as follows:

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

Applicant is the owner of the registered trademark for BENCHMARK PAINTING & CARPENTRY (RN 3744529). All the Applicant is attempting to do with this current trademark application is to refile their original trademark and delete the generic terms "PAINTING & CARPENTRY" from the name. This is essentially the same trademark. With the revisions/deletions I just made to the identification of services, the services are also essentially the same. You cited BENCHMARK COMMUNITIES against our pending trademark. BENCHMARK COMMUNITIES is registered for "development of a master planned community" name. Specifically, "Homebuilding services, development of real property for single-family and multi-family residential and master-planned community purposes." Applicant renovates and or paints one home or kitchen or bathroom at a time. Small jobs compared to developing an entire residential community. I do not believe anyone would confuse these marks. Moreover, Applicant has had a registered trademark for BENCHMARK PAINTING & CARPENTRY services for six (6) years before BENCHMARK COMMUNITIES even filed their trademark application. Given the deletion to the identification of services, and the fact that we had a registered trademark before they did, please reconsider your refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Carpentry contractor services; Carpentry services; Painting contractor services; Painting of commercial and industrial buildings; Decorative interior house painting services; Drywall and painting contractor services; House painting
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1996 and first used in commerce at least as early as 00/00/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Carpentry contractor services; Carpentry services; Painting contractor services; Decorative interior house painting services; Painting of commercial and industrial buildings; Drywall and painting contractor services; House paintingClass 037 for Carpentry services; Painting contractor services; Decorative interior house painting services; Drywall and painting contractor services; House painting
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1996 and first used in commerce at least as early as 00/00/2001 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /rmorris/     Date: 07/07/2017
Signatory's Name: RICHARD L MORRIS JR ESQ
Signatory's Position: ATTORNEY OF RECORD

Signatory's Phone Number: 3056736686

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: 87361956
Internet Transmission Date: Fri Jul 07 16:56:20 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2017070716562007
9994-87361956-590ceb759638d25fc2950163ef
c1585ce201b31695473e0dde32a139c89a1c997-
N/A-N/A-20170707164713209934