TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88261921 UPP (Stylized and/or with Design, see http://uspto.report/TM/88261921/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE

Original PDF file:
evi_2076785158-20191223113129817723_._UPP_Response.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for articles of metal or primarily of metal for use in, with or as pipes, pipework systems, pipe couplings, pipe connectors, pipe fittings, flanges, flanges which have steel reinforcement rings, gaskets and bolts, ball valves and flexible connectors, couplings, terminating reducers and terminating boots, stabiliser bars, test ports, fusion seals, boots for fusion seal, backing rings, jubilee clips, bulkhead seals, pressure vent valves, fuel and petrol service station installations, fuel and petrol service station forecourt installations, service station buildings made primarily from a metal framework, tanks, storage tanks, vessels and containers, process tanks and vessels, underground petroleum tanks, container tanks, fuel tanks, flotation/floculation tanks, pressure vessels, surge vessels, service station buildings, modular units for building service stations, modular units incorporating petrol pumps for building service stations, chambers, sumps, pumps, pump bases, access covers, chamber covers, sump covers, canopies and canopy systems for service stations, vessels, containers or mountings for canopies and for tanks; pipes; pipework systems; pipe couplings, connectors, fittings, joints, seals or entry boots; modular components for building service stations; modular units incorporating the aforesaid goods; parts and fittings for the aforesaid goods
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 05/12/2015 and first used in commerce at least as early as 05/12/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: articles of metal or primarily of metal for use in, with or as pipes, pipework systems, pipe couplings, pipe connectors, pipe fittings, flanges, flanges which have steel reinforcement rings, gaskets and bolts, ball valves and flexible connectors, couplings, terminating reducers and terminating boots, stabiliser bars, test ports, fusion seals, boots for fusion seal, backing rings, jubilee clips, bulkhead seals, pressure vent valves, fuel and petrol service station installations, fuel and petrol service station forecourt installations, service station buildings made primarily from a metal framework, tanks, storage tanks, vessels and containers, process tanks and vessels, underground petroleum tanks, container tanks, fuel tanks, flotation/floculation tanks, pressure vessels, surge vessels, service station buildings, modular units for building service stations, modular units incorporating petrol pumps for building service stations, chambers, sumps, pumps, pump bases, access covers, chamber covers, sump covers, canopies and canopy systems for service stations, vessels, containers or mountings for canopies and for tanks; articles of metal or primarily of metal for use in or with pipes and pipework systems, namely, pipe couplings, pipe connectors, pipe fittings, flanges, flanges which have steel reinforcement rings, gaskets for use in fuel and petrol service station installations and bolts, ball valves not being parts of machines and flexible pipe connectors, pipe fittings in the nature of terminating reducers and terminating boots, stabilizer bars for pipes, pipe fittings in the nature of test ports, fusion seal caps, pipe fittings in the nature of boots for fusion seal, ring-shaped pipe fittings of metal in the nature of backing rings, jubilee pipe clips, manually operated pressure vent valves; pipes; pipe couplings of metal; pipework systems; metal pipe fittings in the nature of entry boots; pipe couplings, connectors, fittings, joints, seals or entry boots; metal pipe collars; modular components for building service stations; modular units incorporating the aforesaid goods; parts and fittings for the aforesaid goodsClass 006 for articles of metal or primarily of metal for use in or with pipes and pipework systems, namely, pipe couplings, pipe connectors, pipe fittings, flanges, flanges which have steel reinforcement rings, gaskets for use in fuel and petrol service station installations and bolts, ball valves not being parts of machines and flexible pipe connectors, pipe fittings in the nature of terminating reducers and terminating boots, stabilizer bars for pipes, pipe fittings in the nature of test ports, fusion seal caps, pipe fittings in the nature of boots for fusion seal, ring-shaped pipe fittings of metal in the nature of backing rings, jubilee pipe clips, manually operated pressure vent valves; pipe couplings of metal; metal pipe fittings in the nature of entry boots; metal pipe collars
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 05/12/2015 and first used in commerce at least as early as 05/12/2015 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for non-metallic pipes (flexible); flexible pipes for subterranean use in fuel and petrol service station installations; pipes for use in carrying petroleum or petroleum products including petrol and other fuels; primary, lined and secondary contained pipes; pipes made from polyethylene; vents, vapour recovery lines and systems, all for use with the aforesaid pipes; pipes, pipe connectors and pipe junctions; pipe couplings, connectors and fittings including sockets, elbows, T-junctions and tees, bends, reducers, termination and sliding electrofusion reducers, 5-bends, end caps, stubs, welding sockets, joints and seals, including electrofusion connectors and fittings; couplings, junctions, joints, collars and extensions; tanks, vessels; containers; storage tanks, pumps, pump bases, canopies; seals (non-metallic) for stopping leakage of fluids; chambers, access chambers and access covers; tank risers; chamber risers; sumps; entry boots; parts and fittings for the aforesaid goods
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 05/12/2015 and first used in commerce at least as early as 05/12/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: non-metallic pipes (flexible); non-metallic flexible pipes; flexible pipes for subterranean use in fuel and petrol service station installations; non-metallic flexible pipes for subterranean use in fuel and petrol service station installations; pipes for use in carrying petroleum or petroleum products including petrol and other fuels; non-metallic flexible pipes for use in carrying petroleum or petroleum products including petrol and other fuels; primary, lined and secondary contained pipes; primary, lined and secondary contained non-metallic flexible pipes; pipes made from polyethylene; flexible pipes made from polyethylene; vents, vapour recovery lines and systems, all for use with the aforesaid pipes; non-metal fittings for pipes in the nature of vents and vapor recovery lines for use with the aforesaid pipes; pipes, pipe connectors and pipe junctions; non-metallic flexible pipes, non-metal pipe fittings in the nature of pipe connectors and non-metal pipe junctions; pipe couplings, connectors and fittings including sockets, elbows, T-junctions and tees, bends, reducers, termination and sliding electrofusion reducers, 5-bends, end caps, stubs, welding sockets, joints and seals, including electrofusion connectors and fittings; non-metal pipe couplings, non-metal pipe fittings in the nature of connectors, sockets, elbows, T-junctions and tees, bends, reducers, termination and sliding electrofusion reducers, 5-bends, end caps, stubs, welding sockets, joints and seals, including electrofusion connectors; couplings, junctions, joints, collars and extensions; non-metal pipe couplings, non-metal pipe junctions, non-metal pipe joints, and non-metal pipe fittings in the nature of extensions; tanks, vessels; plastic molded support bases for fuel dispensing pumps not being machine parts; containers; non-metallic seals for fuel and petrol pipes for stopping leakage of fluids; storage tanks, pumps, pump bases, canopies; portable non-metal tank risers for service station fuel storage tanks; seals (non-metallic) for stopping leakage of fluids; non-metal pipe fittings in the nature of entry boots; chambers, access chambers and access covers; non-metal parts and fittings for the aforesaid goods; tank risers; chamber risers; sumps; entry boots; parts and fittings for the aforesaid goodsClass 017 for non-metallic flexible pipes; non-metallic flexible pipes for subterranean use in fuel and petrol service station installations; non-metallic flexible pipes for use in carrying petroleum or petroleum products including petrol and other fuels; primary, lined and secondary contained non-metallic flexible pipes; flexible pipes made from polyethylene; non-metal fittings for pipes in the nature of vents and vapor recovery lines for use with the aforesaid pipes; non-metallic flexible pipes, non-metal pipe fittings in the nature of pipe connectors and non-metal pipe junctions; non-metal pipe couplings, non-metal pipe fittings in the nature of connectors, sockets, elbows, T-junctions and tees, bends, reducers, termination and sliding electrofusion reducers, 5-bends, end caps, stubs, welding sockets, joints and seals, including electrofusion connectors; non-metal pipe couplings, non-metal pipe junctions, non-metal pipe joints, and non-metal pipe fittings in the nature of extensions; plastic molded support bases for fuel dispensing pumps not being machine parts; non-metallic seals for fuel and petrol pipes for stopping leakage of fluids; portable non-metal tank risers for service station fuel storage tanks; non-metal pipe fittings in the nature of entry boots; non-metal parts and fittings for the aforesaid goods
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 05/12/2015 and first used in commerce at least as early as 05/12/2015 , 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 education, training and instruction relating to the design, construction, repair, installation and maintenance of fuel and petrol service stations, including fuel and petrol service station forecourt installations, and including the design, installation, maintenance and repair of pipework, pipework systems, tanks, modular tank and canopy systems, service station buildings and associated constructions, for fuel and petrol service stations; information, advisory, certification, certification of education and training awards, and consultancy services, all relating to the aforesaid services
Original Filing Basis:
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.

Proposed:
Tracked Text Description: education, training and instruction relating to the design, construction, repair, installation and maintenance of fuel and petrol service stations, including fuel and petrol service station forecourt installations, and including the design, installation, maintenance and repair of pipework, pipework systems, tanks, modular tank and canopy systems, service station buildings and associated constructions, for fuel and petrol service stations; education, training and instruction, namely, providing classes, seminars, and workshops in the field of design, construction, repair, installation and maintenance of fuel and petrol service stations, including fuel and petrol service station forecourt installations, and including the design, installation, maintenance and repair of pipework, pipework systems, tanks, modular tank and canopy systems, service station buildings and associated constructions, for fuel and petrol service stations; information, advisory, certification, certification of education and training awards, and consultancy services, all relating to the aforesaid services; advisory services in the field of educational activities in the fields of design, construction, repair, installation and maintenance of fuel and petrol service stationsClass 041 for education, training and instruction, namely, providing classes, seminars, and workshops in the field of design, construction, repair, installation and maintenance of fuel and petrol service stations, including fuel and petrol service station forecourt installations, and including the design, installation, maintenance and repair of pipework, pipework systems, tanks, modular tank and canopy systems, service station buildings and associated constructions, for fuel and petrol service stations; advisory services in the field of educational activities in the fields of design, construction, repair, installation and maintenance of fuel and petrol service stations
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 020 for non-metal pipe collars
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for certification, namely, testing, analysis, and evaluations of the training awards of others in the field of education on the subject of design, construction, repair, installation, and maintenance of fuel and petrol service stations to determine conformity with certification standards; certification, namely, testing, analysis, and evaluation of the educational services of others in the field of design, construction, repair, installation, and maintenance of fuel and petrol service stations to determine conformity with certification standards
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: Olivia M. Clavio. Olivia M. Clavio of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204
      US
The docket/reference number is 9327-263495.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is oclavio@btlaw.com

The applicants proposed attorney information: Olivia M. Clavio. Olivia M. Clavio of BARNES & THORNBURG LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is 9327-263495.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is oclavio@btlaw.com

Olivia M. Clavio 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: OLIVIA M. CLAVIO. OLIVIA M. CLAVIO of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204
      US
The docket/reference number is 9327-263495.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is oclavio@btlaw.com; TMINDocket@btlaw.com

The applicants proposed correspondence information: Olivia M. Clavio. Olivia M. Clavio of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is 9327-263495.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is oclavio@btlaw.com; tmindocket@btlaw.com; sharrell@btlaw.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording "UPP" in a stylized font. The wording appears inside two brush-stroked curved lines that form an incomplete oval. The lines are wider in the middle and taper down on the ends.

FEE(S)
Fee(s) in the amount of $550 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: /sharrell/      Date: 12/23/2019
Signatory's Name: Sarah P. Harrell
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana bar member
Signatory's Phone Number: 3172361313


Request for Reconsideration Signature
Signature: /sharrell/     Date: 12/23/2019
Signatory's Name: Sarah P. Harrell
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana bar member

Signatory's Phone Number: 3172361313

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    OLIVIA M. CLAVIO
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204
Mailing Address:    Olivia M. Clavio
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204
        
RAM Sale Number: 88261921
RAM Accounting Date: 12/23/2019
        
Serial Number: 88261921
Internet Transmission Date: Mon Dec 23 11:43:49 EST 2019
TEAS Stamp: USPTO/RFR-XXX.XX.XX.XXX-2019122311434965
1640-88261921-70078fda35d99abe5484335d11
b872d3c1a88845b026a8bb1e595d03f49d6e3-CC
-43472514-20191223113129817723