TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 87429083 CALIBER(Standard Characters, see http://uspto.report/TM/87429083/mark.png) has been amended as follows:

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

Applicant has used the mark as least as early as January 1, 1991.  Registrant of 2088071 has used the mark since June 6, 1995 (IC 0003), May, 1996 (IC 001) and December, 1995 (IC 005).  Products bearing the mark of Registrant are not similar to the goods of Applicant. The goods of Applicant are marketed and sold to sophisticated purchasing consumers, consumers which do not overlap with those for the goods of Registrant.  There has never been any evidence of actual confusion despite the time period of time (at least 20 plus years) that the marks have been used by Applicant and Registrant.  The channels of trade for the goods of Applicant and those of Registrant are established channels and are dissimilar; there is no market interface between them.  There is no reason to conclude these channels of trade will differ in the future. 


CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 004 for Industrial greases
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 01/01/1991 and first used in commerce at least as early as 01/01/1991 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Industrial greases; Protective lubricants for use in mining equipment, namely draglines, shovels, drills and earthmoving equipment.Class 004 for Protective lubricants for use in mining equipment, namely draglines, shovels, drills and earthmoving equipment.
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 01/01/1991 and first used in commerce at least as early as 01/01/1991 , and is now in use in such commerce.
SIGNATURE(S)
Request for Reconsideration Signature
Signature: /John Wilson Jones/     Date: 08/23/2018
Signatory's Name: John Wilson Jones
Signatory's Position: Attorney of record, Texas Bar Member

Signatory's Phone Number: 713 429-4800

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87429083
Internet Transmission Date: Thu Aug 23 13:08:45 EDT 2018
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2018082313084554
6736-87429083-61082d45567f6a3bb2c5044c64
42f17b5c2e86287031acea7227f9b93a9f18d1b0
-N/A-N/A-20180823124030383524