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)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88088544 LOCTITE(Standard Characters, see http://uspto.report/TM/88088544/mark.png) has been amended as follows:

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

Response to Office Action Mark: LOCTITE Serial No. 88/088544 Applicant: Henkel IP Holding and GmbH (?Henkel?) Office Action: January 3, 2020. Indefinite and Out of Scope identification of goods ? Amendment Required The Examining Attorney has requested that Applicant amend the identification of goods in Class 1 and Class 17 because she believes the goods in the U.S. application as amended exceed the scope of the goods in the foreign registration and original application. Applicant respectfully submits that, to the contrary, the goods as amended are well within the scope of the original U.S. application and the underlying foreign registration through which priority is claimed. The goods as amended both simplify and NARROW the scope of goods, rather than expand it. Applicant recognizes that the identifications of goods in the original U.S. application and the foreign application are admittedly quite broad and encompass a wide array of goods. While the goods Applicant intends to provide under the LOCTITE mark fall within these broad descriptions, they do not accurately or succinctly reflect the precise goods Applicant plans to provide. Accordingly, when amending the identifications, Applicant limited the goods just to those it had a specific intention to provide under the mark, and used the common terms to describe these goods rather than the more cumbersome language originally submitted. Applicant is aware that in the U.S., unlike many other jurisdictions, identifications of goods must be both succinct and clear to the common reader without a background in the industry. The amended identifications accomplish that. They both simplify the identifications of goods and more accurately describe the goods sold under the LOCTITE mark, all the while staying within the scope of the broad language as originally filed. An explanation of the terms used would be helpful. The products covered in both classes are synthetic resins used for 3D printing. (Some of these synthetic resins are unprocessed and therefore in Class 1, and some are processed or semi-processed and therefore in Class 17.) Synthetic resins are industrially produced resins. There are several different classes of synthetic resins, including thermoplastic resins and thermoset resins. Thermoset resins are compounds that strengthen when heated but cannot be remolded once set. Thermoplastic resins are compounds that can be reheated, remolded, and cooled without causing any chemical changes. Again, both thermoset and thermoplastic resins are forms of synthetic resins. Applicant uses BOTH types in 3D printing applications. Accordingly: Class 1 Original U.S. application: Unprocessed synthetic resins for use in three dimensional (3D) printers; ceramic powers used in manufacturing, conditioning fluids for use in 3D printing machines; thermoplastic compounds As amended: Unprocessed synthetic resins for use in three dimensional (3D) printers, namely, unprocessed thermoplastic and thermoset compounds for use in 3D printing; ceramic powders used in manufacturing Comment: Applicant has narrowed the original identification by adding ?namely . . . ? to further identify the goods with more, not less, specificity. While the term ?thermoset? was not specifically included in the original ID, it is nonetheless included in the term ?unprocessed synthetic resins.? Because we are including both thermoset and thermoplastic compounds in the first portion of the ID, we deleted the term ?thermoplastic compounds? as initially included at the end of the description. Class 17 Original U.S. application: Plastic composite material in the form of powder and pellets for use in additive manufacturing; plastic in powdered form; semi-processed plastics; semi-processed thermoplastics in pellet form; semi-processed thermoplastics in powder form; thermoplastic compounds, namely semi-processed thermoplastics in powder or pellet form; plastics in extruded form for use in forther manufacturing; semi-worked thermoplastic powders used for 3D printing; semi- worked ABS (acrylonitrile butadiene styrene) powders for use in 3D printing; semi-worked PLA (polyactic acid) powders for use in three-dimensional (3D) printing. As amended: Processed and semi-processed thermoplastic and thermoset compounds in pellet and powder form for use in 3D printing. Comment: Contrary to the Examining Attorney?s reading, the foreign registration does NOT limit the goods to semi-worked or semi-processed plastics. Rather, the initial phrase, 'plastic composite material' by definition refers to processed resins, while 'additive manufacturing' is another term for 3D printing. The remainder of the ID refers to semi- processed resins. Based on the foregoing, Applicant submits that the identifications of goods in Classes 1 and 17, as amended, remain within the scope of the original U.S. application and foreign registration. Moreover, the language is succinct and clear to the common reader without knowledge of the industry. Accordingly, Applicant requests that the Examining Attorney withdraw the requirement to amend the identification of goods. Respectfully submitted, Amy Span Wergeles, Esq. For: Henkel IP & Holding GmbH Date: July 3, 2020

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 002 for Filled toner cartridges, filled ink cartridges, filled in cartridges for 3D printers; printing ink, toner
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017912834 registered 07/19/2019 with a renewal date of __________ and an expiration date of 06/05/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Filled toner cartridges, filled ink cartridges, filled in cartridges for 3D printers; Filled toner cartridges for 3D printers, filled ink cartridges for 3D printers, printing ink, toner; printing ink, tonerClass 002 for Filled toner cartridges for 3D printers, filled ink cartridges for 3D printers, printing ink, toner
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017912834 registered 07/19/2019 with a renewal date of __________ and an expiration date of 06/05/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Henkel IP & Holding GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Henkelstrasse 67
      Duesseldorf, 40589
      Germany

Proposed: Henkel IP & Holding GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Henkelstrasse 67
      Duesseldorf, Connecticut 06067
      United States
      Email Address: XXXX
      8605712661
Correspondence Information (current):
      Amy Span Wergeles
      PRIMARY EMAIL FOR CORRESPONDENCE: amy.wergeles@henkel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lizette.sayah@henkel.com; trademarks@henkel.com

The docket/reference number is LOCTITE 3D.
Correspondence Information (proposed):
      Amy Span Wergeles
      PRIMARY EMAIL FOR CORRESPONDENCE: amy.wergeles@henkel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lizette.sayah@henkel.com; trademarks@henkel.com

The docket/reference number is LOCTITE 3D.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: //Amy Span Wergeles//     Date: 07/03/2020
Signatory's Name: Amy Span Wergeles
Signatory's Position: Attorney of Record - Connecticut, Virginia, and District of Columbia bars

Signatory's Phone Number: 860-466-7960

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Amy Span Wergeles
   HENKEL CORPORATION
   LAW DEPARTMENT - TRADEMARKS
   ONE HENKEL WAY
   ROCKY HILL, Connecticut 06067
Mailing Address:    Amy Span Wergeles
   HENKEL CORPORATION
   LAW DEPARTMENT - TRADEMARKS
   ONE HENKEL WAY
   ROCKY HILL, Connecticut 06067
        
Serial Number: 88088544
Internet Transmission Date: Fri Jul 03 22:06:40 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020070322064011
6463-88088544-710e2dbf55857c2242975c8beb
d8b1bf84c6cd18fbee6a874d19112fd4dfed2a53
-N/A-N/A-20200703213248191860