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. 88282530 VANAIR(Standard Characters, see http://uspto.report/TM/88282530/mark.png) has been amended as follows:

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



CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for (Based on Use in Commerce and 44(e)) Non-metal door panels; non-metal ventilated door panels; non-metal ventilated silence door panels; (Based on Intent-to-Use and 44(e)) Non-metal wall silence panels; non-metal wall ventilated panels; non-metal wall silence ventilated panels; non-metal moveable wall partitions; non-metal moveable ventilated wall partitions; non-metal moveable ventilated silence partitions
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 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 06/01/2016 and first used in commerce at least as early as 06/01/2016 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA975200 registered 07/06/2017 with a renewal date of 07/06/2032 and an expiration date of 07/06/2032 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: (Based on Use in Commerce and 44(e)) Non-metal door panels; (Based on Intent-to-Use and 44(e)) Non-metal door panels; non-metal ventilated door panels; non-metal ventilated silence door panels; (Based on Intent-to-Use and 44(e)) Non-metal wall silence panels; non-metal wall silence panels; non-metal wall ventilated panels; non-metal wall silence ventilated panels; non-metal moveable wall partitions; non-metal moveable ventilated wall partitions; non-metal moveable ventilated silence partitionsClass 019 for (Based on Intent-to-Use and 44(e)) Non-metal door panels; non-metal ventilated door panels; non-metal ventilated silence door panels; non-metal wall silence panels; non-metal wall ventilated panels; non-metal wall silence ventilated panels
Deleted Filing Basis: 1(a)
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA975200 registered 07/06/2017 with a renewal date of 07/06/2032 and an expiration date of 07/06/2032 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: VanAir Design Inc. a(n) BC company, legally organized under the laws of Canada, having an address of
      5679 Hyde Street
      Burnaby, BC, V5G4C6
      Canada

Proposed: VanAir Design Inc., British Columbia Corporation legally organized under the laws of Canada, having an address of
      5679 Hyde Street
      Burnaby, BC, V5G4C6
      Canada
      XXXX (authorized)
      8056596800

The applicant hereby appoints COREY A. DONALDSON. Other appointed attorneys are Bruce M. Green, David J. McGruder, Thomas W. Bailey, Gavin N. Manning, George F. Kondor, Hilton W.C. Sue, Craig A. Ash, Todd A. Rattray, David H. Takagawa, Jennifer A. Marles, Roni M. Jones, Jaye G. Heybl, Brian J. Philpott, Tyler R. Train. COREY A. DONALDSON of FERGUSON CASE ORR PATERSON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1050 SOUTH KIMBALL ROAD
      VENTURA, California 93004
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is OYENW.066.

The phone number is 8056596800.

The email address is trademarks@fcoplaw.com

COREY A. DONALDSON 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: . , is located at

      
      ,

The applicants proposed correspondence information: COREY A. DONALDSON. COREY A. DONALDSON of FERGUSON CASE ORR PATERSON LLP, is located at

      1050 SOUTH KIMBALL ROAD
      VENTURA, California 93004
      United States
The docket/reference number is OYENW.066.

The phone number is 8056596800.

The email address is trademarks@fcoplaw.com; cdonaldson@fcoplaw.com; mlopez@fcoplaw.com; mail@patentable.com

SIGNATURE(S)
Response Signature
Signature: /Corey A. Donaldson/     Date: 10/03/2019
Signatory's Name: COREY A. DONALDSON
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 8056596800

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:    
   
   
   
   ,
Mailing Address:    COREY A. DONALDSON
   FERGUSON CASE ORR PATERSON LLP
   1050 SOUTH KIMBALL ROAD
   VENTURA, California 93004
        
Serial Number: 88282530
Internet Transmission Date: Thu Oct 03 20:17:03 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019100320170382
8056-88282530-6103a8ad9cb8990b7272722728
44f95651d9dfaf3f2cd1225db6d4095c5bb8dc04
0-N/A-N/A-20191003193334519376