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. 88235101 BRIDGEWAY(Standard Characters, see http://uspto.report/TM/88235101/mark.png) has been amended as follows:

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

This responds to the Office Action dated 4/3/2020.

After suspension of the instant application on 11/5/2019 “until submission of foreign registration” and Applicant’s 3/13/2020 Response to Suspension Inquiry, registration was refused on 4/3/2020 alleging that “Registration is refused because the goods and/or services identified in the U.S. application are completely different from, and thus exceed the scope of, the goods and/or services in the foreign registration,” and that Applicant identifies “Barriers, namely, portable high strength flexible metal frames for building which can be deployed rapidly and filled with material to protect personnel, buildings, equipment and against flood in the nature of crowd control barriers, road barriers, bridge barriers, barriers for protecting personnel and animals, barriers for base camps, and barriers against floods and for impact resistance; component parts, accessories and fittings for all the aforesaid goods, namely, metal framing and metal framing connectors, clamps, nuts, bolts, washers, and pins,” and that “the foreign registration identifies the following goods: ‘gates, fences and accessories of metal.’”

It is true that the foreign registration identifies “gates, fences and accessories of metal” in International Class 6.

It is also true that the foreign registration also identifies “Barriers; crowd control barriers; road barriers; bridge barriers, all being for the protection of personnel and/or animals; barriers for protecting equipment and buildings; barriers for base camps and barriers against floods and for impact (crash) resistance.” in International Class 17, goods identical to the goods originally identified by Applicant in International Class 17 in their application, acceptably amended according to the examiner’s requirements to specify the nature of the barriers, and moved to International Cloass 6 according to the examiner’s requirements. See HISTORY OF AMENDMENTS TO APPLICANT’S IDENTIFICATION OF GOODS, attached.

Thus, Applicant’s identified goods are supported under Sec. 44(e) by the submitted foreign registration and do not exceed the scope of the goods identified in the foreign registration. The difference in class assignment, International Class 6 required in the U.S. versus International Class 17 acceptable and accepted in Europe, does not negate support of the present application by the foreign registration. With regard to applications under Sec. 44, “improper classification may be corrected by switching goods/services by amendment from one to another of the classes originally set forth, or by changing the class designations” TMEP 1403.02(b), and “the applicant may rely on the same foreign registration to cover the additional classes in the U.S. application,” TMEP 1402.01(b).

Therefore, in light of the foregoing, Applicant respectfully submits that their application is in order for publication and registration.

EVIDENCE

Original PDF file:
evi_726512170-20200902161 354226021_._03559372.PDF
Converted PDF file(s) ( 1 page) Evidence-1
Correspondence Information (current):
      Jeffrey C. Joyce
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@eatonpeabody.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 18237.
Correspondence Information (proposed):
      Jeffrey C. Joyce
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@eatonpeabody.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 18237.

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: /Jeffrey C. Joyce/     Date: 09/02/2020
Signatory's Name: Jeffrey C. Joyce
Signatory's Position: Attorney of Record

Signatory's Phone Number: 207-274-5266

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:    Jeffrey C. Joyce
   Eaton Peabody
   
   P.O. Box 15235
   PORTLAND, Maine 04112
Mailing Address:    Jeffrey C. Joyce
   Eaton Peabody
   P.O. Box 15235
   PORTLAND, Maine 04112
        
Serial Number: 88235101
Internet Transmission Date: Wed Sep 02 16:29:47 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200902162947102
363-88235101-7502e672e30be97eaa7e9c94357
14180c2640b2d9a132e9f3a1629632f39dc3c-N/
A-N/A-20200902161354226021