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. 88253498 SURFACING SCIENCE(Standard Characters, see http://uspto.report/TM/88253498/mark.png) has been amended as follows:

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

The cited registrations, namely, Registration Nos. 4,299,263 and 4, 302,427 have been canceled, and therefor the rejection for likelihood of confusion is moot and should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing online news, announcements and information regarding polishing substrates and polishing materials for polishing substrates
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/31/2017 and first used in commerce at least as early as 01/31/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing online news, announcements and information regarding polishing substrates and polishing materials for polishing substrates; Providing online publication, namely, newsletter regarding polishing substrates and polishing materials for polishing substrates.Class 041 for Providing online publication, namely, newsletter regarding polishing substrates and polishing materials for polishing substrates.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/31/2017 and first used in commerce at least as early as 01/31/2017 , and is now in use in such commerce.
The applicant's current attorney information: John H. Platt. John H. Platt of SNELL & WILMER L.L.P., is located at

      ONE ARIZONA CENTER
      400 EAST VAN BUREN STREET
      PHOENIX, Arizona 85004
      US
The docket/reference number is 42473.02300.

The phone number is 602-382-6367.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com

The applicants proposed attorney information: John H. Platt. Other appointed attorneys are Daniel I. Ackerman, Dax Alvarez, Lester J. Anderson, J. Damon Ashcraft, David G. Barker, Anne Bolamperti, Robert A. Clarke, David I. Dubin, Jonathan B. Fitzgerald, Andrew Flior, Tyler J. Fortner, R. Lee Fraley, Albin H. Gess, Farris J. Gillman, Matthew V. Grumbling, Deborah Gubernick, Charles F. Hauff, Jr., Andrew Huah, Dwight Kim, Peter Krehbiel, Grant T. Langton, Sid Leach, Gabrielle M. Morlock, Jeffrey D. Morton, William F. Mulholland II, Yingchun Ni, David P. Nigro, Paul A. Pappalardo, Cynthia L. Pillote, Joseph W. Price, Simone T. Raess, Ryan D. Ricks, David E. Rogers, C. Matthew Rozier, Gregory Scheiferstein, Howard I. Sobelman, C. Blake Steel, Joseph Teleoglou, Ketan S. Vakil, and Michele N. Washington. John H. Platt of SNELL & WILMER L.L.P., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE ARIZONA CENTER
      400 EAST VAN BUREN STREET
      PHOENIX, Arizona 85004
      United States
The docket/reference number is 42473.02300.

The phone number is 602-382-6367.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com

John H. Platt 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: JOHN H. PLATT. JOHN H. PLATT of SNELL & WILMER L.L.P., is located at

      ONE ARIZONA CENTER
      400 EAST VAN BUREN STREET
      PHOENIX, Arizona 85004
      US
The docket/reference number is 42473.02300.

The phone number is 602-382-6367.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com; jplatt@swlaw.com

The applicants proposed correspondence information: John H. Platt. John H. Platt of SNELL & WILMER L.L.P., is located at

      ONE ARIZONA CENTER
      400 EAST VAN BUREN STREET
      PHOENIX, Arizona 85004
      United States
The docket/reference number is 42473.02300.

The phone number is 602-382-6367.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com; jhplatt@swlaw.com; sschahn@swlaw.com; tseidel@swlaw.com

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


SIGNATURE(S)
Response Signature
Signature: /John H. Platt/     Date: 11/26/2019
Signatory's Name: John H. Platt
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 602-382-6000

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:    JOHN H. PLATT
   SNELL & WILMER L.L.P.
   ONE ARIZONA CENTER
   400 EAST VAN BUREN STREET
   PHOENIX, Arizona 85004
Mailing Address:    John H. Platt
   SNELL & WILMER L.L.P.
   ONE ARIZONA CENTER
   400 EAST VAN BUREN STREET
   PHOENIX, Arizona 85004
        
Serial Number: 88253498
Internet Transmission Date: Tue Nov 26 16:19:31 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191126161931325
180-88253498-700e582af529d443e7cae3b7cf1
afd67c39eb7291b295b0373b6cb05850efbfe418
-N/A-N/A-20191126150134746077