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. 87444305 TRADEMARK(Standard Characters, see http://uspto.report/TM/87444305/mark.png) has been amended as follows:

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

The Office has maintained the Section 2(d) Refusal.  Applicant has amended the description to read as follows: "Wholesale and retail bulk sales of Applicant-owned plastic resin and Applicant-owned plastic compounds."  Applicant respectfully traverses the Section 2(d) refusal. 

The Section 2(d) refusal is based on Registration No. 3204879, a registration for the term “TRADEMARK” used in connection with “WAREHOUSING, TRUCK TRANSPORT AND FREIGHT-FORWARDING SERVICES”.  Applicant respectfully submits that warehousing, truck transport, and freight forwarding services are services provided by the Registrant in connection with the goods of others, not of the Registrant, and goods of all kinds.  This is supported by the services advertised on the Registrant's website.  They transport the goods of others via truck, store the goods of others (sometimes in refrigerated warehouses) when the transportation process requires it as an incidental service, and handle all of the logistics of shipping of the goods of others.

Applicant purchases plastic resins (takes ownership of them) and keeps them in inventory, and then sells their now-owned inventory of plastic resins to purchasers, and in some cases arranges their delivery to them.  They do not sell other products, they do not sell products owned by others,  they do not store products for others, they do not ship anything other than inventory that they are in the process of selling to others.  Unlike the Registrant who markets customers in need of shipping services, the Applicant markets to customers who are looking to purchase plastic resins.   The Applicant respectfully submits that bulk sales of plastic resins owned by the Applicant is in no way confusing with “warehousing, truck transport and freight forwarding services” which is describing delivery services rather than plastics sales and distribution services. Accordingly, Applicant respectfully requests reconsideration and withdrawal of the Section 2(d) refusal.

Applicant also believes it has addressed the Identification requirement and requests that this requirement be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Wholesale and retail bulk sales of plastic resin and plastic compounds
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: Wholesale and retail bulk sales of plastic resin and plastic compounds; Wholesale and retail bulk sales of Applicant-owned plastic resin and Applicant-owned plastic compoundsClass 035 for Wholesale and retail bulk sales of Applicant-owned plastic resin and Applicant-owned plastic compounds
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)
Request for Reconsideration Signature
Signature: /Mark D Simpson/     Date: 09/17/2018
Signatory's Name: Mark D Simpson
Signatory's Position: Attorney of record, PA bar member

Signatory's Phone Number: 215-972-7880

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 filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87444305
Internet Transmission Date: Mon Sep 17 16:57:52 EDT 2018
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XXX-2018091716575265
9039-87444305-61053ecbb235ca1455630d6b64
715a1eef58966fd9713378dce7545f567b257a-N
/A-N/A-20180917165347863630