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. 88121986 EVANS(Standard Characters, see http://uspto.report/TM/88121986/mark.png) has been amended as follows:

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

The Examiner refuses registration on the grounds that Applicant's mark is merely primarily a surname. Applicant is amending the application to insert a claim of acquired distinctiveness under Section 2(f). The mark has been in use for over 70 consecutive years.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Machining services; Tooling and die services; Metal stamping services; Welding services; Research and development services in the field of custom design and engineering of a wide variety of machines and tools for production, machining services, tooling and die services, metal stamping services, and welding services; Custom design and engineering of a wide variety of machines and tools for production; and Consulting services in the field of machining services, tooling and die services, metal stamping services, and welding services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1948 and first used in commerce at least as early as 00/00/1948 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Machining services; Machine shop services, namely, machining parts for others; Tooling and die services; Tooling and die services, namely, designing and building tools, dies, jigs and fixtures used to stamp metal parts; Metal stamping services; Welding services; Research and development services in the field of custom design and engineering of a wide variety of machines and tools for production, machining services, tooling and die services, metal stamping services, and welding services; Consulting services in the field of machining services, tooling and die services, metal stamping services, and welding services; Custom design and engineering of a wide variety of machines and tools for production; and Consulting services in the field of machining services, tooling and die services, metal stamping services, and welding servicesClass 040 for Machine shop services, namely, machining parts for others; Tooling and die services, namely, designing and building tools, dies, jigs and fixtures used to stamp metal parts; Metal stamping services; Welding services; Consulting services in the field of machining services, tooling and die services, metal stamping services, and welding services
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1948 and first used in commerce at least as early as 00/00/1948 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Research and development services in the field of custom design and engineering of a wide variety of machines and tools for production, machining services, tooling and die services, metal stamping services, and welding services; Custom design and engineering of a wide variety of machines and tools for production
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1948 and first used in commerce at least as early as 00/00/1948 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of printouts of web pages describing the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-6488163230-20190614124315132298_._EVANS_specimens_pages_from_website_for_application.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

ADDITIONAL STATEMENTS
Miscellaneous Statement
While the Examiner indicates Applicant needs to provide specimens for Class 42, Applicant believes that the specimens submitted with the application adequately describe there services. Nevertheless, Applicant is submitting the additional copy of the specimens and draws the Examiner's particular attention to pages 1 and 2 of the specimens and other references throughout the remaining pages of the specimens of use.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


FEE(S)
Fee(s) in the amount of $275 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: /MPW/      Date: 06/14/2019
Signatory's Name: Matthew P. Warenzak
Signatory's Position: Attorney for Applicant - Georgia Bar Member

Response Signature
Signature: /MPW/     Date: 06/14/2019
Signatory's Name: Matthew P. Warenzak
Signatory's Position: Attorney for Applicant - Georgia Bar Member

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: 88121986
RAM Accounting Date: 06/14/2019
        
Serial Number: 88121986
Internet Transmission Date: Fri Jun 14 12:52:06 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019061412520669
2796-88121986-620e84c88cb6e742a1b8d89341
bc89d060dc3b73d0a7938bd28e3c5e77622d204b
-CC-12409-20190614124315132298