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. 88231459 COBALT(Standard Characters, see http://uspto.report/TM/88231459/mark.png) has been amended as follows:

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

i. Applicant has narrowed its identification of goods and respectfully requests that the Examiner withdraw the cited registrations and prior pending application. ii. In response to the Examiner's queries, Applicant advises as follows: 1. Does the term COBALT have a meaning in your industry? A: No. If so, what is the meaning? 2. Does the term COBALT describe a feature, characteristic, purpose, or function of your service? A: No.If so, please explain. 3. Are any of your goods the colour COBALT blue? A:No If so, please explain. 4. Are any of your goods made with any amount of the chemical COBALT? A:No If so, please explain. 5. Is the wording COBALT used in your industry in relation to similar goods/services? A:No If so, please explain. 6. Do any of your services involve the use of the chemical COBALT? A:No If so, please explain. iii. The applied for mark is not merely descriptive as supported by Applicant's responses to the Examiner's queries. iv. Applicant, by its undersigned attorney, encloses a fully executed Declaration. v. Applicant, by its undersigned attorney, encloses a copy of its corresponding UK registration. Contingent upon the acceptance thereof, kindly delete Applicant's Section 1(b) filing basis.

EVIDENCE

Original PDF file:
evi_1607996147-20190913154152980081_._Signed_US_Declaration.PDF
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_1607996147-20190916095857848136_._COBALT_-_UK_Registration.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 001 for Printing chemicals; chemicals for use in printing

Applicant hereby deletes the following class of goods/services from the application.
Class 016 for Paper; paperboard; paper signs; adhesive paper

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Plastic films
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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: Plastic films; Coated plastic film for use on printing substratesClass 017 for Coated plastic film for use on printing substrates
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Signs, and information and advertising displays, non-metallic
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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: Signs, and information and advertising displays, non-metallic; Non-luminous, non-mechanical signs not of metal; Non-luminous, non-mechanical display signs not of metal; Non-luminous, non-mechanical advertising signsClass 019 for Non-luminous, non-mechanical signs not of metal; Non-luminous, non-mechanical display signs not of metal; Non-luminous, non-mechanical advertising signs
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Textile material; textile substitute materials made from synthetic materials; banners; plastic banners
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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: Textile material; Cloth banners; textile substitute materials made from synthetic materials; plastic banners; bannersClass 024 for Cloth banners; plastic banners
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Printing services; finishing and coating of textiles and printed matter
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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: Printing services; finishing and coating of textiles and printed matter; finishing and coating of textiles; finishing and coating of printing substratesClass 040 for Printing services; finishing and coating of textiles; finishing and coating of printing substrates
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3264645 registered 03/23/2018 with a renewal date of __________ and an expiration date of __________ ], 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.

The applicant's current attorney information: William C. Wright. William C. Wright of EPSTEIN DRANGEL LLP, is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York 10165
      US

The phone number is 212-292-5390.

The email address is mail@ipcounselors.com

The applicants proposed attorney information: William C. Wright. William C. Wright of EPSTEIN DRANGEL LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York 10165
      United States

The phone number is 212-292-5390.

The email address is mail@ipcounselors.com

William C. Wright 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: WILLIAM C. WRIGHT. WILLIAM C. WRIGHT of EPSTEIN DRANGEL LLP, is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York 10165
      US

The phone number is 212-292-5390.

The email address is mail@ipcounselors.com

The applicants proposed correspondence information: William C. Wright. William C. Wright of EPSTEIN DRANGEL LLP, is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York 10165
      United States

The phone number is 212-292-5390.

The email address is mail@ipcounselors.com

SIGNATURE(S)
Response Signature
Signature: /William C. Wright/     Date: 09/16/2019
Signatory's Name: William C. Wright
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 2122925390

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:    WILLIAM C. WRIGHT
   EPSTEIN DRANGEL LLP
   
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York 10165
Mailing Address:    William C. Wright
   EPSTEIN DRANGEL LLP
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York 10165
        
Serial Number: 88231459
Internet Transmission Date: Mon Sep 16 10:02:52 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019091610025287
5788-88231459-610a5dfff4ec36fe67b5dc2570
f6017b2280824673f77abed938d0822f2cf7-N/A
-N/A-20190916095857848136