Response to Office Action

RENEGADE

Quality Craft Ltd.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88037251
LAW OFFICE ASSIGNED LAW OFFICE 109
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88037251/mark.png
LITERAL ELEMENT RENEGADE
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
ARGUMENT(S)
See attached argument text.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_4768133-20190329180542261085_._esponse_to_Likelihood_of_Confusion_Refusal_4811-7899-8153_v2.pdf
       CONVERTED PDF FILE(S)
       (9 pages)
\\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0003.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0005.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0006.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0007.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0008.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0009.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\880\372\88037251\xml4\ROA0010.JPG
DESCRIPTION OF EVIDENCE FILE the actual argument text.
GOODS AND/OR SERVICES SECTION (006)(current)
INTERNATIONAL CLASS 006
DESCRIPTION
tool boxes; tool storage and garage storage, namely, mechanics tool storage cabinets, chests, side cabinets, jobsite boxes, truck boxes, bolt bins; ladders and step stools; snow throwers; work platforms; shelves; storage racks; lockers; filing cabinets; storage drawers and chambers; tire stands and racks; storage cabinets; storage bins; garage storage and work benches/work tops; work supports, namely, work benches, work platforms, car creepers and mechanic creepers and dolly modes, casters, magnetic tool storage labels, magnetic socket set holders, fencing panels, snow roof rakes, sump pumps, lighting, namely, light bulbs, portable or stand work lights, flood lights, flash lights, laminate flooring, hardwood flooring, engineered flooring, vinyl flooring, slate flooring, flooring installation accessories, namely, flooring installation kits, flooring installation tools, flooring underlayment, rubber garage flooring and rubber stair treads, fire rings, safes
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
GOODS AND/OR SERVICES SECTION (006)(proposed)
INTERNATIONAL CLASS 006
TRACKED TEXT DESCRIPTION
tool boxes; Metal chests; tool storage and garage storage, namely, mechanics tool storage cabinets, chests, side cabinets, jobsite boxes, truck boxes, bolt bins; jobsite boxes namely metal storage container for tools; ladders and step stools; bolt bins, namely, general purpose metal storage bins; snow throwers; metal ladders; work platforms; metal step stools; shelves; tool boxes of metal, empty; storage racks; Work supports, namely, metal casters; lockers; metal fencing panels, safes; filing cabinets; storage drawers and chambers; tire stands and racks; storage cabinets; storage bins; garage storage and work benches/work tops; work supports, namely, work benches, work platforms, car creepers and mechanic creepers and dolly modes, casters, magnetic tool storage labels, magnetic socket set holders, fencing panels, snow roof rakes, sump pumps, lighting, namely, light bulbs, portable or stand work lights, flood lights, flash lights, laminate flooring, hardwood flooring, engineered flooring, vinyl flooring, slate flooring, flooring installation accessories, namely, flooring installation kits, flooring installation tools, flooring underlayment, rubber garage flooring and rubber stair treads, fire rings, safes
FINAL DESCRIPTION
Metal chests; jobsite boxes namely metal storage container for tools; bolt bins, namely, general purpose metal storage bins; metal ladders; metal step stools; tool boxes of metal, empty; Work supports, namely, metal casters; metal fencing panels, safes
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
       FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (008)(class added)
INTERNATIONAL CLASS 008
DESCRIPTION
Tool holders, namely, magnetic socket set holders; snow roof rakes
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (011)(class added)
INTERNATIONAL CLASS 011
DESCRIPTION
Lighting, namely, portable or stand work lights, namely, LED flood lights and LED work lights for construction settings; flood lights, flash lights, fire rings in the nature of outdoor fire pits
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (012)(class added)
INTERNATIONAL CLASS 012
DESCRIPTION
Mechanics' creepers and car creepers; dollies; automotive aftermarket parts, namely, truck storage box; racks and stands specifically designed to hold tires
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (016)(class added)
INTERNATIONAL CLASS 016
DESCRIPTION Magnetic decals, namely, magnetic tool storage labels
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (019)(class added)
INTERNATIONAL CLASS 019
DESCRIPTION
Non-metal fencing panels; laminate flooring; hardwood flooring; engineered hardwood flooring; engineered flooring, namely, interlocking plastic flooring tiles; vinyl flooring; slate flooring; flooring underlayment, namely, underlay for laminate flooring, rubber garage flooring, rubber stair treads
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
GOODS AND/OR SERVICES SECTION (020)(class added)
INTERNATIONAL CLASS 020
DESCRIPTION
Tool storage and garage storage, namely, metal mechanics tool storage cabinets; metal storage cabinets; non-metal ladders; non-metal step stools; shelves; storage racks; storage drawers and chambers as furniture parts; lockers; filing cabinets; garage storage namely, storage cabinets, job boxes, and tool chests; work benches; tool boxes, not of metal, empty; non-metal casters
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1890625
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 03/28/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
PAYMENT SECTION
NUMBER OF CLASSES 6
APPLICATION FOR REGISTRATION PER CLASS 275
TOTAL FEES DUE 1650
SIGNATURE SECTION
DECLARATION SIGNATURE /pjkoncel/
SIGNATORY'S NAME Patrick J. Koncel
SIGNATORY'S POSITION Attorney of Record, Missouri bar member
SIGNATORY'S PHONE NUMBER 8164746550
DATE SIGNED 03/29/2019
RESPONSE SIGNATURE /pjkoncel/
SIGNATORY'S NAME Patrick J. Koncel
SIGNATORY'S POSITION Attorney of Record, Missouri bar member
SIGNATORY'S PHONE NUMBER 8164746550
DATE SIGNED 03/29/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Mar 29 18:17:58 EDT 2019
TEAS STAMP USPTO/ROA-X.X.XX.XXX-2019
0329181758479843-88037251
-6205dbf8ceee4438f8ff7c6d
6fc3922582fa9beef385a0659
a1ca898ef7c2b448-CC-5662-
20190329180542261085



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. 88037251 RENEGADE (Stylized and/or with Design, see http://uspto.report/TM/88037251/mark.png) has been amended as follows:

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

See attached argument text.

EVIDENCE
Evidence in the nature of the actual argument text. has been attached.
Original PDF file:
evi_4768133-20190329180542261085_._esponse_to_Likelihood_of_Confusion_Refusal_4811-7899-8153_v2.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for tool boxes; tool storage and garage storage, namely, mechanics tool storage cabinets, chests, side cabinets, jobsite boxes, truck boxes, bolt bins; ladders and step stools; snow throwers; work platforms; shelves; storage racks; lockers; filing cabinets; storage drawers and chambers; tire stands and racks; storage cabinets; storage bins; garage storage and work benches/work tops; work supports, namely, work benches, work platforms, car creepers and mechanic creepers and dolly modes, casters, magnetic tool storage labels, magnetic socket set holders, fencing panels, snow roof rakes, sump pumps, lighting, namely, light bulbs, portable or stand work lights, flood lights, flash lights, laminate flooring, hardwood flooring, engineered flooring, vinyl flooring, slate flooring, flooring installation accessories, namely, flooring installation kits, flooring installation tools, flooring underlayment, rubber garage flooring and rubber stair treads, fire rings, safes
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: tool boxes; Metal chests; tool storage and garage storage, namely, mechanics tool storage cabinets, chests, side cabinets, jobsite boxes, truck boxes, bolt bins; jobsite boxes namely metal storage container for tools; ladders and step stools; bolt bins, namely, general purpose metal storage bins; snow throwers; metal ladders; work platforms; metal step stools; shelves; tool boxes of metal, empty; storage racks; Work supports, namely, metal casters; lockers; metal fencing panels, safes; filing cabinets; storage drawers and chambers; tire stands and racks; storage cabinets; storage bins; garage storage and work benches/work tops; work supports, namely, work benches, work platforms, car creepers and mechanic creepers and dolly modes, casters, magnetic tool storage labels, magnetic socket set holders, fencing panels, snow roof rakes, sump pumps, lighting, namely, light bulbs, portable or stand work lights, flood lights, flash lights, laminate flooring, hardwood flooring, engineered flooring, vinyl flooring, slate flooring, flooring installation accessories, namely, flooring installation kits, flooring installation tools, flooring underlayment, rubber garage flooring and rubber stair treads, fire rings, safesClass 006 for Metal chests; jobsite boxes namely metal storage container for tools; bolt bins, namely, general purpose metal storage bins; metal ladders; metal step stools; tool boxes of metal, empty; Work supports, namely, metal casters; metal fencing panels, safes
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 008 for Tool holders, namely, magnetic socket set holders; snow roof rakes
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 011 for Lighting, namely, portable or stand work lights, namely, LED flood lights and LED work lights for construction settings; flood lights, flash lights, fire rings in the nature of outdoor fire pits
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 012 for Mechanics' creepers and car creepers; dollies; automotive aftermarket parts, namely, truck storage box; racks and stands specifically designed to hold tires
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 016 for Magnetic decals, namely, magnetic tool storage labels
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 019 for Non-metal fencing panels; laminate flooring; hardwood flooring; engineered hardwood flooring; engineered flooring, namely, interlocking plastic flooring tiles; vinyl flooring; slate flooring; flooring underlayment, namely, underlay for laminate flooring, rubber garage flooring, rubber stair treads
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 020 for Tool storage and garage storage, namely, metal mechanics tool storage cabinets; metal storage cabinets; non-metal ladders; non-metal step stools; shelves; storage racks; storage drawers and chambers as furniture parts; lockers; filing cabinets; garage storage namely, storage cabinets, job boxes, and tool chests; work benches; tool boxes, not of metal, empty; non-metal casters
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1890625 filed 03/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

FEE(S)
Fee(s) in the amount of $1650 is being submitted.

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: /pjkoncel/      Date: 03/29/2019
Signatory's Name: Patrick J. Koncel
Signatory's Position: Attorney of Record, Missouri bar member
Signatory's Phone Number: 8164746550


Response Signature
Signature: /pjkoncel/     Date: 03/29/2019
Signatory's Name: Patrick J. Koncel
Signatory's Position: Attorney of Record, Missouri bar member

Signatory's Phone Number: 8164746550

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.

        
RAM Sale Number: 88037251
RAM Accounting Date: 04/01/2019
        
Serial Number: 88037251
Internet Transmission Date: Fri Mar 29 18:17:58 EDT 2019
TEAS Stamp: USPTO/ROA-X.X.XX.XXX-2019032918175847984
3-88037251-6205dbf8ceee4438f8ff7c6d6fc39
22582fa9beef385a0659a1ca898ef7c2b448-CC-
5662-20190329180542261085


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