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. 88272817 CASCADES IMGN RETAIL SOLUTIONS(Standard Characters, see http://uspto.report/TM/88272817/mark.png) has been amended as follows:

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

Applicant requests the application be suspended until a copy of the foreign registration is available.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail sale of product packaging being corrugated cardboard containers, paperboard boxes for industrial packaging, packaging boxes of cardboard, packaging containers of paper, containers of cardboard for packaging, window display
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1925184 filed 10/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Retail sale of product packaging being corrugated cardboard containers, paperboard boxes for industrial packaging, packaging boxes of cardboard, packaging containers of paper, containers of cardboard for packaging, window display; Retail store services featuring product packaging being corrugated cardboard containers, paperboard boxes for industrial packaging, packaging boxes of cardboard, packaging containers of paper, containers of cardboard for packaging, window displayClass 035 for Retail store services featuring product packaging being corrugated cardboard containers, paperboard boxes for industrial packaging, packaging boxes of cardboard, packaging containers of paper, containers of cardboard for packaging, window display
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1925184 filed 10/15/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Richard M. LaBarge. Richard M. LaBarge of MARSHALL, GERSTEIN & BORUN LLP, is located at

      233 SOUTH WACKER DRIVE, SUITE 6300
      CHICAGO, Illinois 60606
      US
The docket/reference number is 32789/60184.

The phone number is 312-474-6300.

The fax number is 312-474-0448.

The email address is docket@marshallip.com

The applicants proposed attorney information: Richard M. LaBarge. Richard M. LaBarge of MARSHALL, GERSTEIN & BORUN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      233 SOUTH WACKER DRIVE, SUITE 6300
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 32789/60184.

The phone number is 312-474-6300.

The fax number is 312-474-0448.

The email address is docket@marshallip.com

Richard M. LaBarge 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: RICHARD M. LABARGE. RICHARD M. LABARGE of MARSHALL, GERSTEIN & BORUN LLP, is located at

      233 SOUTH WACKER DRIVE, SUITE 6300
      CHICAGO, Illinois 60606
      US
The docket/reference number is 32789/60184.

The phone number is 312-474-6300.

The fax number is 312-474-0448.

The email address is docket@marshallip.com

The applicants proposed correspondence information: Richard M. LaBarge. Richard M. LaBarge of MARSHALL, GERSTEIN & BORUN LLP, is located at

      233 SOUTH WACKER DRIVE, SUITE 6300
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 32789/60184.

The phone number is 312-474-6300.

The fax number is 312-474-0448.

The email address is docket@marshallip.com

SIGNATURE(S)
Response Signature
Signature: /rmlabarge/     Date: 10/10/2019
Signatory's Name: Richard M. LaBarge
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312 474-6646

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:    RICHARD M. LABARGE
   MARSHALL, GERSTEIN & BORUN LLP
   
   233 SOUTH WACKER DRIVE, SUITE 6300
   CHICAGO, Illinois 60606
Mailing Address:    Richard M. LaBarge
   MARSHALL, GERSTEIN & BORUN LLP
   233 SOUTH WACKER DRIVE, SUITE 6300
   CHICAGO, Illinois 60606
        
Serial Number: 88272817
Internet Transmission Date: Thu Oct 10 10:33:02 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019101010330254
2127-88272817-6107f289ec1c9112991afaff4c
a50cd79abc39a18838abeadf89f3bf142c728977
a-N/A-N/A-20191010084148669507