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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88235203 |
LAW OFFICE ASSIGNED |
LAW OFFICE 101 |
MARK SECTION |
MARK |
http://uspto.report/TM/88235203/mark.png |
LITERAL ELEMENT |
PURPLE |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (016)(current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction; printed
educational and reference materials, namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards and sound reducing
gypsum boards; paper, namely, end tapes |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/00/2013 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/00/2013 |
GOODS AND/OR SERVICES SECTION (016)(proposed) |
INTERNATIONAL CLASS |
016 |
TRACKED TEXT DESCRIPTION |
Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster
construction; printed educational and reference materials, namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and
procedures utilizing gypsum boards and sound reducing gypsum boards; paper, namely, end tapes; paper packaging, namely,
end tapes |
FINAL DESCRIPTION |
Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction; printed
educational and reference materials, namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards and sound reducing
gypsum boards; paper packaging, namely, end tapes |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/00/2013 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/00/2013 |
GOODS AND/OR SERVICES SECTION (019)(current) |
INTERNATIONAL CLASS |
019 |
DESCRIPTION |
Ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard, wallboard, gypsum wallboard, gypsum panels,
cement board |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/00/2013 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/00/2013 |
GOODS AND/OR SERVICES SECTION (019)(proposed) |
INTERNATIONAL CLASS |
019 |
TRACKED TEXT DESCRIPTION |
Ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard, wallboard,
gypsum wallboard, gypsum panels, cement board; Non-metallic building materials, namely, ceiling boards, sheathing, tile backer, grid marks as an integrated
component of wallboard, wallboard, gypsum wallboard, gypsum panels, cement board |
FINAL DESCRIPTION |
Non-metallic building materials, namely, ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard,
wallboard, gypsum wallboard, gypsum panels, cement board |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/00/2013 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/00/2013 |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing a website featuring information and non-downloadable videos in the field of building materials; providing building materials
information |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/00/2003 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/00/2003 |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Providing a website featuring information and non-downloadable videos in the field of building
materials; Providing a website featuring non-downloadable videos in the field of building materials; providing building
materials information |
FINAL DESCRIPTION |
Providing a website featuring non-downloadable videos in the field of building materials |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/00/2003 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/00/2003 |
GOODS AND/OR SERVICES SECTION (037)(class added) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Construction information, namely, building materials information; providing a website featuring building materials information |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/00/2003 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/00/2003 |
STATEMENT TYPE |
"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]. |
SPECIMEN FILE NAME(S) |
ORIGINAL PDF FILE |
SPN0-121923534-20190621170556238391_._specimen_cl_37.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\882\352\88235203\xml4\ROA0002.JPG |
SPECIMEN DESCRIPTION |
PDF of Applicant's website featuring the mark |
ADDITIONAL STATEMENTS SECTION |
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use |
PURPLE in class 19 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. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Laura C. Budzichowski/ |
SIGNATORY'S NAME |
Laura C. Budzichowski |
SIGNATORY'S POSITION |
Vice President and Secretary |
SIGNATORY'S PHONE NUMBER |
7043657425 |
DATE SIGNED |
06/24/2019 |
RESPONSE SIGNATURE |
/Shyla N. Jones/ |
SIGNATORY'S NAME |
Shyla N. Jones |
SIGNATORY'S POSITION |
Attorney of Record, Illinois bar member |
SIGNATORY'S PHONE NUMBER |
312 726-8131 |
DATE SIGNED |
06/24/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Jun 24 13:08:01 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
190624130801928956-882352
03-620e0278b502cda2b16fcb
1c65b36997ce59561e7cf1dc6
fd874e6f4e2bfe7-CC-14495-
20190621185450383265 |
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.
88235203 PURPLE(Standard Characters, see http://uspto.report/TM/88235203/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction; printed educational and reference materials,
namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards and sound reducing gypsum boards; paper, namely, end
tapes
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 01/00/2013
and first used in commerce at least as early as 01/00/2013 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Printed pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction;
printed educational and reference materials, namely, guides, books, booklets, and brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards and
sound reducing gypsum boards;
paper, namely, end tapes;
paper packaging, namely, end tapesClass 016 for Printed
pamphlets, informational flyers, booklets, and newsletters in the field of wallboard and plaster construction; printed educational and reference materials, namely, guides, books, booklets, and
brochures regarding construction techniques, products, systems, and procedures utilizing gypsum boards and sound reducing gypsum boards; paper packaging, namely, end tapes
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 01/00/2013
and first used in commerce at least as early as 01/00/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard, wallboard, gypsum wallboard, gypsum panels, cement board
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 01/00/2013
and first used in commerce at least as early as 01/00/2013 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard, wallboard, gypsum wallboard, gypsum panels,
cement board;
Non-metallic building materials, namely, ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard, wallboard,
gypsum wallboard, gypsum panels, cement boardClass 019 for Non-metallic building materials, namely, ceiling boards, sheathing, tile backer, grid marks as an integrated component of wallboard,
wallboard, gypsum wallboard, gypsum panels, cement board
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 01/00/2013
and first used in commerce at least as early as 01/00/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing a website featuring information and non-downloadable videos in the field of building materials; providing building materials information
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 02/00/2003
and first used in commerce at least as early as 02/00/2003 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Providing a website featuring information and non-downloadable videos in the field of building materials;
Providing a website featuring non-downloadable videos in the field of building materials;
providing building materials informationClass 041 for
Providing a website featuring non-downloadable videos in the field of building materials
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 02/00/2003
and first used in commerce at least as early as 02/00/2003 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 037 for Construction information, namely, building materials information; providing a website featuring building materials information
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 02/00/2003
and first used in commerce at least as early as 02/00/2003 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 037 . The specimen(s) submitted consists of PDF of Applicant's website featuring the mark .
"
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:
SPN0-121923534-20190621170556238391_._specimen_cl_37.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
PURPLE in class 19 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: /Laura C. Budzichowski/ Date: 06/24/2019
Signatory's Name: Laura C. Budzichowski
Signatory's Position: Vice President and Secretary
Signatory's Phone Number: 7043657425
Response Signature
Signature: /Shyla N. Jones/ Date: 06/24/2019
Signatory's Name: Shyla N. Jones
Signatory's Position: Attorney of Record, Illinois bar member
Signatory's Phone Number: 312 726-8131
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: 88235203
RAM Accounting Date: 06/24/2019
Serial Number: 88235203
Internet Transmission Date: Mon Jun 24 13:08:01 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190624130801928
956-88235203-620e0278b502cda2b16fcb1c65b
36997ce59561e7cf1dc6fd874e6f4e2bfe7-CC-1
4495-20190621185450383265