Response to Office Action

WORX

Positec Group Limited

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 88038189
LAW OFFICE ASSIGNED LAW OFFICE 111
MARK SECTION
MARK http://uspto.report/TM/88038189/mark.png
LITERAL ELEMENT WORX
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (006)(current)
INTERNATIONAL CLASS 006
DESCRIPTION
Tool boxes of metal, empty; ladders of metal; combined vice and workbench of metal; metal clamps; workbench accessories, namely, clamps; vice benches of metal; replacement parts for the aforesaid goods
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (006)(proposed)
INTERNATIONAL CLASS 006
TRACKED TEXT DESCRIPTION
Tool boxes of metal, empty; ladders of metal; combined vice and workbench of metal; metal clamps; workbench accessories, namely, metal clamps; workbench accessories, namely, clamps; replacement parts for the aforesaid goods; vice benches of metal
FINAL DESCRIPTION
Tool boxes of metal, empty; ladders of metal; metal clamps; workbench accessories, namely, metal clamps; replacement parts for the aforesaid goods
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (007)(current)
INTERNATIONAL CLASS 007
DESCRIPTION
Metalworking machines; woodworking machines; cutting machines; wrenches (machines); electric hammers; sharpeners; buffer; routers; grinders (machines); sanders; polishers; planers; hot air guns; impact wrenches; grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; profile sanders; power-operated spray guns; brushes, electrically operated; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; glue guns; fans being parts of machines; spray guns for paint; electric tire inflator; impact drills; hammer drills; shears; garden shredders; jig saws; reciprocating saws; circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for screwdriver; saw blades for compact circular saws; sanding paper for sanders and oscillating multi-purpose tool; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact circular saw; carbide rasps for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for router; grinding wheels, abrasive wheels for angle grinder; sanding sheets for sanders; polishing pads for sanders and oscillating multi tools; sanding pads for sanders and angle grinders; machines and apparatus for cleaning; washing apparatus; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaners; tree pruners (machines); chain saws; robotic lawnmowers; sweepers; power operated brushing machines; vacuum cleaner; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, robotic steam cleaner; brushes for vacuum cleaners; robotic snow thrower; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines; garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for mowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for pressure cleaners; grass boxes for mowers; hoses for pressure cleaners
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (007)(proposed)
INTERNATIONAL CLASS 007
TRACKED TEXT DESCRIPTION
Metalworking machines; woodworking machines; woodworking machines, namely, planers, shovels, drills, buffers, routers; cutting machines; wrenches (machines); power-driven wrenches; electric hammers; sharpeners; power-operated sharpeners; buffer; Power-operated tools, namely, buffers; routers; Power tools, namely, routers; grinders (machines); Power tools, namely, grinders; sanders; Power tools, namely, sanders; polishers; Power tools, namely, polishers; planers; Power tools, namely, planers; hot air guns; electric hot air glue guns; impact wrenches; grinding machines; tool grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; profile sanders; Power tools, namely, profile sanders; power-operated spray guns; brushes, electrically operated; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; glue guns; electric glue guns; fans being parts of machines; fans for machine engines; spray guns for paint; electric tire inflator; pneumatically operated tire inflation machine; impact drills; Air-operated power tools, namely, impact drills; hammer drills; Air-operated power tools, namely, hammer drills; shears; Pneumatic shears; garden shredders; Power lawn and garden tools, namely, shredders; jig saws; power-operated jig saws; reciprocating saws; Power-operated reciprocating saws; circular saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for screwdriver; screwdriver bits for power screwdrivers; saw blades for compact circular saws; saw blades for power-operated compact circular saws; sanding paper for sanders and oscillating multi-purpose tool; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact circular saw; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for router; router bits for power-operated routers; grinding wheels, abrasive wheels for angle grinder; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for sanders; sanding sheets for power-operated sanders; polishing pads for sanders and oscillating multi tools; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for sanders and angle grinders; sanding pads for power-operated sanders and angle grinders; machines and apparatus for cleaning; machines and apparatus for cleaning surfaces using high pressure water; washing apparatus; floor washing machines; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaners; robotic swimming pool cleaner machines; tree pruners (machines); tree pruner machines; chain saws; robotic lawnmowers; sweepers; electric sweepers; power operated brushing machines; vacuum cleaner; vacuum cleaners; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, robotic steam cleaner; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow thrower; robotic snow throwers; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines; robotic watering machines for cleaning surfaces using high pressure water; garden tool accessories, namely, spools, edging wheels for grass trimmers; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for mowers; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for pressure cleaners; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for mowers; grass boxes for lawnmowers; hoses for pressure cleaners; hoses for power-operated pressure cleaners
FINAL DESCRIPTION
Metalworking machines; woodworking machines, namely, planers, shovels, drills, buffers, routers; cutting machines; power-driven wrenches; electric hammers; power-operated sharpeners; Power-operated tools, namely, buffers; Power tools, namely, routers; Power tools, namely, grinders; Power tools, namely, sanders; Power tools, namely, polishers; Power tools, namely, planers; electric hot air glue guns; impact wrenches; tool grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; Power tools, namely, profile sanders; power-operated spray guns; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; electric glue guns; fans for machine engines; spray guns for paint; pneumatically operated tire inflation machine; Air-operated power tools, namely, impact drills; Air-operated power tools, namely, hammer drills; Pneumatic shears; Power lawn and garden tools, namely, shredders; power-operated jig saws; Power-operated reciprocating saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for power screwdrivers; saw blades for power-operated compact circular saws; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for power-operated routers; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for power-operated sanders; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for power-operated sanders and angle grinders; machines and apparatus for cleaning surfaces using high pressure water; floor washing machines; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaner machines; tree pruner machines; chain saws; robotic lawnmowers; electric sweepers; power operated brushing machines; vacuum cleaners; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow throwers; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines for cleaning surfaces using high pressure water; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for lawnmowers; hoses for power-operated pressure cleaners
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (008)(current)
INTERNATIONAL CLASS 008
DESCRIPTION
Accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (008)(proposed)
INTERNATIONAL CLASS 008
TRACKED TEXT DESCRIPTION
Hand tools, namely, combined vice and workbench of metal; bench vices of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps
FINAL DESCRIPTION
Hand tools, namely, combined vice and workbench of metal; bench vices of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Application software, computer software, computer software applications, software; downloadable software; downloadable mobile applications; application software for smart phones; application software for mobile phones, tablets, laptops and computers; downloadable mobile and computer software for power tools and gardening tools, especially as control system; remote controls; remote control apparatus; software for remote controls; remote control apparatus for garden tools and power tools; speakers, radios; lasers for measuring; measuring instruments and apparatus, levels (instruments for determining the horizontal); safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Application software, computer software, computer software applications, software; Computer application software for mobile phones, namely, software for power operated tools and power operated lawn and garden tools, computer software for power operated tools and power operated lawn and garden tools, computer software applications for power operated tools and power operated lawn and garden tools, software for power operated tools and power operated lawn and garden tools; downloadable software; downloadable software for power operated tools and power operated lawn and garden tools; downloadable mobile applications; downloadable mobile applications for power operated tools and power operated lawn and garden tools; application software for smart phones; application software for smart phones for power operated tools and power operated lawn and garden tools; application software for mobile phones, tablets, laptops and computers; application software for mobile phones, tablets, laptops and computers for power operated tools and power operated lawn and garden tools; downloadable mobile and computer software for power tools and gardening tools, especially as control system; downloadable mobile and computer software for use with power tools and gardening tools, for use as a control system; remote controls; remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus; remote control apparatus for power operated tools and power operated lawn and garden tools; software for remote controls; software for remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for garden tools and power tools; speakers, radios; audio speakers, radios; lasers for measuring; measuring instruments and apparatus, levels (instruments for determining the horizontal); measuring instrumentation and apparatus, namely, digitizers; carpenter's levels; safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire
FINAL DESCRIPTION
Computer application software for mobile phones, namely, software for power operated tools and power operated lawn and garden tools, computer software for power operated tools and power operated lawn and garden tools, computer software applications for power operated tools and power operated lawn and garden tools, software for power operated tools and power operated lawn and garden tools; downloadable software for power operated tools and power operated lawn and garden tools; downloadable mobile applications for power operated tools and power operated lawn and garden tools; application software for smart phones for power operated tools and power operated lawn and garden tools; application software for mobile phones, tablets, laptops and computers for power operated tools and power operated lawn and garden tools; downloadable mobile and computer software for use with power tools and gardening tools, for use as a control system; remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for power operated tools and power operated lawn and garden tools; software for remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for garden tools and power tools; audio speakers, radios; lasers for measuring; measuring instrumentation and apparatus, namely, digitizers; carpenter's levels; safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (011)(current)
INTERNATIONAL CLASS 011
DESCRIPTION
LED lights; LED lighting fixtures for indoor and outdoor lighting applications; work lights; heat guns; electric cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (011)(proposed)
INTERNATIONAL CLASS 011
TRACKED TEXT DESCRIPTION
LED lights; LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; work lights; LED work lights for construction settings; heat guns; electric cool boxes; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing
FINAL DESCRIPTION
LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; LED work lights for construction settings; heat guns; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (035)(no change)
GOODS AND/OR SERVICES SECTION (037)(no change)
GOODS AND/OR SERVICES SECTION (020)(class added)
INTERNATIONAL CLASS 020
DESCRIPTION vice benches of metal being furniture
FILING BASIS Section 1(b)
PAYMENT SECTION
NUMBER OF CLASSES 1
APPLICATION FOR REGISTRATION PER CLASS 275
TOTAL FEES DUE 275
SIGNATURE SECTION
DECLARATION SIGNATURE The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
RESPONSE SIGNATURE /Scot A. Duvall/
SIGNATORY'S NAME Scot A. Duvall
SIGNATORY'S POSITION Attorney of record, Kentucky bar member
SIGNATORY'S PHONE NUMBER 502-625-2784
DATE SIGNED 04/17/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Apr 17 20:01:51 EDT 2019
TEAS STAMP USPTO/ROA-XX.XX.X.XXX-201
90417200151892459-8803818
9-620231335ad29af537574c2
4dbd8b9815031919ad214d734
5caa8b3729416c4-CC-6216-2
0190417193839580044



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. 88038189 WORX(Standard Characters, see http://uspto.report/TM/88038189/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 006 for Tool boxes of metal, empty; ladders of metal; combined vice and workbench of metal; metal clamps; workbench accessories, namely, clamps; vice benches of metal; replacement parts for the aforesaid goods
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: Tool boxes of metal, empty; ladders of metal; combined vice and workbench of metal; metal clamps; workbench accessories, namely, metal clamps; workbench accessories, namely, clamps; replacement parts for the aforesaid goods; vice benches of metalClass 006 for Tool boxes of metal, empty; ladders of metal; metal clamps; workbench accessories, namely, metal clamps; replacement parts for the aforesaid goods
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Metalworking machines; woodworking machines; cutting machines; wrenches (machines); electric hammers; sharpeners; buffer; routers; grinders (machines); sanders; polishers; planers; hot air guns; impact wrenches; grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; profile sanders; power-operated spray guns; brushes, electrically operated; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; glue guns; fans being parts of machines; spray guns for paint; electric tire inflator; impact drills; hammer drills; shears; garden shredders; jig saws; reciprocating saws; circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for screwdriver; saw blades for compact circular saws; sanding paper for sanders and oscillating multi-purpose tool; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact circular saw; carbide rasps for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for router; grinding wheels, abrasive wheels for angle grinder; sanding sheets for sanders; polishing pads for sanders and oscillating multi tools; sanding pads for sanders and angle grinders; machines and apparatus for cleaning; washing apparatus; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaners; tree pruners (machines); chain saws; robotic lawnmowers; sweepers; power operated brushing machines; vacuum cleaner; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, robotic steam cleaner; brushes for vacuum cleaners; robotic snow thrower; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines; garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for mowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for pressure cleaners; grass boxes for mowers; hoses for pressure cleaners
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: Metalworking machines; woodworking machines; woodworking machines, namely, planers, shovels, drills, buffers, routers; cutting machines; wrenches (machines); power-driven wrenches; electric hammers; sharpeners; power-operated sharpeners; buffer; Power-operated tools, namely, buffers; routers; Power tools, namely, routers; grinders (machines); Power tools, namely, grinders; sanders; Power tools, namely, sanders; polishers; Power tools, namely, polishers; planers; Power tools, namely, planers; hot air guns; electric hot air glue guns; impact wrenches; grinding machines; tool grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; profile sanders; Power tools, namely, profile sanders; power-operated spray guns; brushes, electrically operated; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; glue guns; electric glue guns; fans being parts of machines; fans for machine engines; spray guns for paint; electric tire inflator; pneumatically operated tire inflation machine; impact drills; Air-operated power tools, namely, impact drills; hammer drills; Air-operated power tools, namely, hammer drills; shears; Pneumatic shears; garden shredders; Power lawn and garden tools, namely, shredders; jig saws; power-operated jig saws; reciprocating saws; Power-operated reciprocating saws; circular saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for screwdriver; screwdriver bits for power screwdrivers; saw blades for compact circular saws; saw blades for power-operated compact circular saws; sanding paper for sanders and oscillating multi-purpose tool; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact circular saw; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for router; router bits for power-operated routers; grinding wheels, abrasive wheels for angle grinder; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for sanders; sanding sheets for power-operated sanders; polishing pads for sanders and oscillating multi tools; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for sanders and angle grinders; sanding pads for power-operated sanders and angle grinders; machines and apparatus for cleaning; machines and apparatus for cleaning surfaces using high pressure water; washing apparatus; floor washing machines; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaners; robotic swimming pool cleaner machines; tree pruners (machines); tree pruner machines; chain saws; robotic lawnmowers; sweepers; electric sweepers; power operated brushing machines; vacuum cleaner; vacuum cleaners; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, robotic steam cleaner; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow thrower; robotic snow throwers; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines; robotic watering machines for cleaning surfaces using high pressure water; garden tool accessories, namely, spools, edging wheels for grass trimmers; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for mowers; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for pressure cleaners; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for mowers; grass boxes for lawnmowers; hoses for pressure cleaners; hoses for power-operated pressure cleanersClass 007 for Metalworking machines; woodworking machines, namely, planers, shovels, drills, buffers, routers; cutting machines; power-driven wrenches; electric hammers; power-operated sharpeners; Power-operated tools, namely, buffers; Power tools, namely, routers; Power tools, namely, grinders; Power tools, namely, sanders; Power tools, namely, polishers; Power tools, namely, planers; electric hot air glue guns; impact wrenches; tool grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; Power tools, namely, profile sanders; power-operated spray guns; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; electric glue guns; fans for machine engines; spray guns for paint; pneumatically operated tire inflation machine; Air-operated power tools, namely, impact drills; Air-operated power tools, namely, hammer drills; Pneumatic shears; Power lawn and garden tools, namely, shredders; power-operated jig saws; Power-operated reciprocating saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for power screwdrivers; saw blades for power-operated compact circular saws; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for power-operated routers; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for power-operated sanders; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for power-operated sanders and angle grinders; machines and apparatus for cleaning surfaces using high pressure water; floor washing machines; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaner machines; tree pruner machines; chain saws; robotic lawnmowers; electric sweepers; power operated brushing machines; vacuum cleaners; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow throwers; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines for cleaning surfaces using high pressure water; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for lawnmowers; hoses for power-operated pressure cleaners
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps
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: Hand tools, namely, combined vice and workbench of metal; bench vices of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clampsClass 008 for Hand tools, namely, combined vice and workbench of metal; bench vices of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Application software, computer software, computer software applications, software; downloadable software; downloadable mobile applications; application software for smart phones; application software for mobile phones, tablets, laptops and computers; downloadable mobile and computer software for power tools and gardening tools, especially as control system; remote controls; remote control apparatus; software for remote controls; remote control apparatus for garden tools and power tools; speakers, radios; lasers for measuring; measuring instruments and apparatus, levels (instruments for determining the horizontal); safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire
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: Application software, computer software, computer software applications, software; Computer application software for mobile phones, namely, software for power operated tools and power operated lawn and garden tools, computer software for power operated tools and power operated lawn and garden tools, computer software applications for power operated tools and power operated lawn and garden tools, software for power operated tools and power operated lawn and garden tools; downloadable software; downloadable software for power operated tools and power operated lawn and garden tools; downloadable mobile applications; downloadable mobile applications for power operated tools and power operated lawn and garden tools; application software for smart phones; application software for smart phones for power operated tools and power operated lawn and garden tools; application software for mobile phones, tablets, laptops and computers; application software for mobile phones, tablets, laptops and computers for power operated tools and power operated lawn and garden tools; downloadable mobile and computer software for power tools and gardening tools, especially as control system; downloadable mobile and computer software for use with power tools and gardening tools, for use as a control system; remote controls; remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus; remote control apparatus for power operated tools and power operated lawn and garden tools; software for remote controls; software for remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for garden tools and power tools; speakers, radios; audio speakers, radios; lasers for measuring; measuring instruments and apparatus, levels (instruments for determining the horizontal); measuring instrumentation and apparatus, namely, digitizers; carpenter's levels; safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fireClass 009 for Computer application software for mobile phones, namely, software for power operated tools and power operated lawn and garden tools, computer software for power operated tools and power operated lawn and garden tools, computer software applications for power operated tools and power operated lawn and garden tools, software for power operated tools and power operated lawn and garden tools; downloadable software for power operated tools and power operated lawn and garden tools; downloadable mobile applications for power operated tools and power operated lawn and garden tools; application software for smart phones for power operated tools and power operated lawn and garden tools; application software for mobile phones, tablets, laptops and computers for power operated tools and power operated lawn and garden tools; downloadable mobile and computer software for use with power tools and gardening tools, for use as a control system; remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for power operated tools and power operated lawn and garden tools; software for remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for garden tools and power tools; audio speakers, radios; lasers for measuring; measuring instrumentation and apparatus, namely, digitizers; carpenter's levels; safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for LED lights; LED lighting fixtures for indoor and outdoor lighting applications; work lights; heat guns; electric cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing
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: LED lights; LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; work lights; LED work lights for construction settings; heat guns; electric cool boxes; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothingClass 011 for LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; LED work lights for construction settings; heat guns; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 020 for vice benches of metal being furniture
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Scot A. Duvall/     Date: 04/17/2019
Signatory's Name: Scot A. Duvall
Signatory's Position: Attorney of record, Kentucky bar member

Signatory's Phone Number: 502-625-2784

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: 88038189
RAM Accounting Date: 04/18/2019
        
Serial Number: 88038189
Internet Transmission Date: Wed Apr 17 20:01:51 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201904172001518924
59-88038189-620231335ad29af537574c24dbd8
b9815031919ad214d7345caa8b3729416c4-CC-6
216-20190417193839580044


Response to Office Action [image/jpeg]


uspto.report is an independent third-party trademark research tool that is not affiliated, endorsed, or sponsored by the United States Patent and Trademark Office (USPTO) or any other governmental organization. The information provided by uspto.report is based on publicly available data at the time of writing and is intended for informational purposes only.

While we strive to provide accurate and up-to-date information, we do not guarantee the accuracy, completeness, reliability, or suitability of the information displayed on this site. The use of this site is at your own risk. Any reliance you place on such information is therefore strictly at your own risk.

All official trademark data, including owner information, should be verified by visiting the official USPTO website at www.uspto.gov. This site is not intended to replace professional legal advice and should not be used as a substitute for consulting with a legal professional who is knowledgeable about trademark law.

© 2024 USPTO.report | Privacy Policy | Resources | RSS Feed of Trademarks | Trademark Filings Twitter Feed