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. 88226798 AQUASEAL(Standard Characters, see http://uspto.report/TM/88226798/mark.png) has been amended as follows:

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

Applicant states that the refusal based on Reg. No. 2007073 should be withdrawn because that mark was not renewed in 2017 and is effectively dead. See Exhibit A. The refusal based on Reg. No. 3487006 should likewise be withdrawn because the grout product described in the registration is not sufficiently connected to the flooring products in the subject application. As shown in the registration's identification and in Exhibit B, the description provided by the registrant, the grout product is for specific use to "plug high water infiltration sources" in cast structures. As described in Exhibit B, the registered product is s hardening foam "chemical grout used to stop water infiltration in sanitary sewer manholes." There is no overlap in the industries or even purchasers. Applicant respectfully requests that the refusal be withdrawn.

EVIDENCE
Evidence in the nature of Exhibits A and B, as referenced in Arguments section has been attached.
Original PDF file:
evi_381429978-20190909084841538011_._Exhibit_A.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_381429978-20190909084841538011_._Exhibit_B.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Flooring; Floors; Flooring products
Original Filing Basis:
Proposed:
Tracked Text Description: Flooring; Laminate flooring; Floors; hardwood flooring; Flooring products; non-metal floorsClass 019 for Laminate flooring; hardwood flooring; non-metal floors
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.

The applicant's current attorney information: Austin Padgett. Austin Padgett of TROUTMAN SANDERS LLP, is located at

      600 PEACHTREE ST. NE, SUITE 3000
      ATLANTA, Georgia 30308
      US
The docket/reference number is 030305.2.

The phone number is 404-885-3155.

The fax number is 404-885-3900.

The email address is trademarks@troutman.com

The applicants proposed attorney information: Austin Padgett. Austin Padgett of TROUTMAN SANDERS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      600 PEACHTREE ST. NE, SUITE 3000
      ATLANTA, Georgia 30308
      United States
The docket/reference number is 030305.2.

The phone number is 404-885-3155.

The fax number is 404-885-3900.

The email address is trademarks@troutman.com

Austin Padgett submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: AUSTIN PADGETT. AUSTIN PADGETT of TROUTMAN SANDERS LLP, is located at

      600 PEACHTREE ST. NE, SUITE 3000
      ATLANTA, Georgia 30308
      US
The docket/reference number is 030305.2.

The phone number is 404-885-3155.

The fax number is 404-885-3900.

The email address is trademarks@troutman.com; austin.padgett@troutman.com; kristina.woodruff@troutman.com

The applicants proposed correspondence information: Austin Padgett. Austin Padgett of TROUTMAN SANDERS LLP, is located at

      600 PEACHTREE ST. NE, SUITE 3000
      ATLANTA, Georgia 30308
      United States
The docket/reference number is 030305.2.

The phone number is 404-885-3155.

The fax number is 404-885-3900.

The email address is trademarks@troutman.com; austin.padgett@troutman.com; kristina.woodruff@troutman.com; jennifer.hennelly@troutman.com

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: /Austin Padgett/      Date: 09/09/2019
Signatory's Name: Austin Padgett
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 4048853155


Response Signature
Signature: /Austin Padgett/     Date: 09/09/2019
Signatory's Name: Austin Padgett
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 4048853155

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:    AUSTIN PADGETT
   TROUTMAN SANDERS LLP
   
   600 PEACHTREE ST. NE, SUITE 3000
   ATLANTA, Georgia 30308
Mailing Address:    Austin Padgett
   TROUTMAN SANDERS LLP
   600 PEACHTREE ST. NE, SUITE 3000
   ATLANTA, Georgia 30308
        
Serial Number: 88226798
Internet Transmission Date: Mon Sep 09 09:02:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190909090254699
955-88226798-61069804b5217723963aaeb2b4e
156f9b7a85bda0f82d832923e082794a5497a037
-N/A-N/A-20190909084841538011