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. 88173164 GARLAND INDUSTRIES, INC.(Standard Characters, see http://uspto.report/TM/88173164/mark.png) has been amended as follows:

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

The Examining Attorney issued a refusal to register Applicant’s trademark GARLAND INDUSTRIES per Section 2(d) of the Lanham (Trademark) Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark, when used in connection with the goods recited in the application, is likely to be confused with the 10 cited Marks: U.S. Registration Nos. 2108941, 2123308, 3089810, 3203459, 3203460, 3781823, 3828758, 3828759, 5514455, and 5514458.

Applicant submits that Registrant of the cited marks, The Garland Company, is one of several companies under the umbrella of Garland Industries, Inc. and as such, Applicant believes that there is no likelihood of confusion. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 019 for Building materials; general contracting/construction management services; surface protection products; commercial textiles; hard banding and hard surfacing products and services in the welding industry; industrial and consumer plastics; quality, high-performance roofing and building envelope solutions for the commercial, industrial and institutional markets; roofing services; below-grade waterproofing services; design and manufacturing services for roofing products and metal roofing products; custom manufacturing of reinforcement products; construction management, design build, engineering and general contracting services; real estate services; distributorship services for bitumen membranes; distributor of high-performance polyurethane and epoxy waterproofing and flooring solutions; distributorship services for temporary floor and wall protection products; manufacturing and distributorship services for plastic and soundproofing products; hardfacing services; pipe welding services; manufacturing and distributorship services for waterproofing and weather barrier products; manufacturing and distributorship services for dust containment products, protective wear, and heavy-duty surface protection products

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 019 ) for Distributorship services in the field of bitumen membranes; distributorship services in the field of high-performance polyurethane and epoxy waterproofing and flooring solutions ; distributorship services in the field of temporary floor and wall protection products; distributorship services in the field of plastic and soundproofing products; distributorship services in the field of waterproofing and weather barrier products; distributorship services in the field of dust containment products, protective wear, and heavy-duty surface protection products
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 037 for General construction contracting; construction management services; roofing services; below-grade waterproofing services, namely, basement waterproofing; construction management; general contractor services, namely, plumbing, heating and air conditioning, carpentry, drywall, painting, electrical, building and framing contractor services
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "INDUSTRIES" apart from the mark as shown.


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: /bet/      Date: 08/02/2019
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of record/Ohio bar member
Signatory's Phone Number: 216-363-9000


Response Signature
Signature: /bet/     Date: 08/02/2019
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of Record/Ohio bar member

Signatory's Phone Number: 216-363-9000

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: 88173164
RAM Accounting Date: 08/02/2019
        
Serial Number: 88173164
Internet Transmission Date: Fri Aug 02 12:18:32 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019080212183273
7812-88173164-620b05b4c155848fdf78984191
7927781249446e9a717616bf2d1bd4cde61325dc
-CC-18313423-20190802121420532198