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. 88284223 BLUE-POINT (Stylized and/or with Design, see http://uspto.report/TM/88284223/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 001 for Diesel fuel system cleaning fluid
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 12/31/2010 and first used in commerce at least as early as 12/31/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Diesel fuel system cleaning fluid; Chemical preparation, namely, diesel fuel system cleaning fluid; chemical leak detection fluid for automotive useClass 001 for Chemical preparation, namely, diesel fuel system cleaning fluid; chemical leak detection fluid for automotive use
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 12/31/2010 and first used in commerce at least as early as 12/31/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Roll cabs; tool storage chests of metal sold empty; trays of metal
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 07/23/2009 and first used in commerce at least as early as 07/23/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Roll cabs; Tool storage chests of metal sold empty; tool accessory trays of metal sold empty; trays of metal; metal socket railsClass 006 for Tool storage chests of metal sold empty; tool accessory trays of metal sold empty; metal socket rails
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 07/23/2009 and first used in commerce at least as early as 07/23/2009 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 006 . The specimen(s) submitted consists of product bearing the mark and webpage for ordering .
"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 File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Automotive and industrial power tools, namely, power-operated impact wrenches; cordless power-operated ratchet wrenches; cordless power drills; cordless work lights; power-operated air drills; power-operated air hammer; die grinders; pencil die grinders; air power-operated punch tool; electric air-powered sanders, namely, orbital, disc, in-line and jitterbug sanders, belt sanders; power-operated tire buffer; power-operated pinstripe removal tool; power-operated needle scaler; finishing tools, namely, power-operated polisher; power drill bits; cutting and grinding accessories, namely, grinder/finisher kits comprised of grinders, grinder discs, shank adaptor, spanner wrenches all sold as a unit; pneumatic blow guns; air swivel connectors; laser engraving pens, being parts of machines; transmission boot and joint tools, namely, boot tool, joint clamps, boot installer, air regulator, and rack and pinion tools; motorcycle power jacks; automobile power jacks; truck power jacks; power jack stands; power transmission jacks; hydraulic jacks; engine hoists and slings; valve core and stem tools; camshaft pulley tool namely, electric pulley blocks, oil filter crusher, timing belt tension compressor for engines for land vehicles; timing belt tension compressor; power-operated lock tool for cam shaft sprockets; brake bleeder pumps other than for vehicles; body repair kits comprised of paint spray guns, abrasive blast cleaning machines, wet-dry vacuums, parts washers, namely, high pressure washer; soldering kits consisting of electric soldering iron, and also tips, stand and cleaning sponge in a storage case all sold as a unit; miniature butane soldering torches
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Automotive and industrial power tools, namely, power-operated impact wrenches; cordless power-operated ratchet wrenches; cordless power drills; cordless work lights; power-operated air drills; power-operated air hammer; die grinders being power tools; die grinders; pencil die grinders being power tools; pencil die grinders; air power-operated punch tool; electric air-powered sanders, namely, orbital, disc, in-line and jitterbug sanders, belt sanders; power-operated tire buffer; power-operated pinstripe removal tool; power-operated needle scaler; finishing tools, namely, power-operated polisher; power drill bits; cutting and grinding accessories, namely, grinder/finisher kits comprised of grinders, grinder discs, shank adaptor, spanner wrenches all sold as a unit; pneumatic blow guns; parts for pneumatic blow guns, namely, air swivel connectors; air swivel connectors; laser engraving pens, being parts of machines; transmission boot and joint tools, namely, boot tool, joint clamps, boot installer, air regulator, and rack and pinion tools; motorcycle power jacks; automobile power jacks; truck power jacks; power jack stands; power transmission jacks; hydraulic jacks; engine hoists; engine hoists and slings; engine slings in the nature of a cables for engine hoists; valve core and stem tools; valve core and stem tools, namely, power-operated valve core removers; camshaft pulley tool namely, electric pulley blocks, oil filter crusher, timing belt tension compressor for engines for land vehicles; timing belt tension compressor; electric timing belt tension compressor; power-operated lock tool for cam shaft sprockets; brake bleeder pumps other than for vehicles; body repair kits comprised of paint spray guns, abrasive blast cleaning machines, wet-dry vacuums, parts washers, namely, high pressure washer; soldering kits consisting of electric soldering iron, and also tips, stand and cleaning sponge in a storage case all sold as a unit; miniature butane soldering torchesClass 007 for Automotive and industrial power tools, namely, power-operated impact wrenches; cordless power-operated ratchet wrenches; cordless power drills; power-operated air drills; power-operated air hammer; die grinders being power tools; pencil die grinders being power tools; air power-operated punch tool; electric air-powered sanders, namely, orbital, disc, in-line and jitterbug sanders, belt sanders; power-operated tire buffer; power-operated pinstripe removal tool; power-operated needle scaler; finishing tools, namely, power-operated polisher; power drill bits; cutting and grinding accessories, namely, grinder/finisher kits comprised of grinders, grinder discs, shank adaptor, spanner wrenches all sold as a unit; pneumatic blow guns; parts for pneumatic blow guns, namely, air swivel connectors; laser engraving pens, being parts of machines; transmission boot and joint tools, namely, boot tool, joint clamps, boot installer, air regulator, and rack and pinion tools; motorcycle power jacks; automobile power jacks; truck power jacks; power jack stands; power transmission jacks; hydraulic jacks; engine hoists; engine slings in the nature of a cables for engine hoists; valve core and stem tools, namely, power-operated valve core removers; camshaft pulley tool namely, electric pulley blocks, oil filter crusher, timing belt tension compressor for engines for land vehicles; electric timing belt tension compressor; power-operated lock tool for cam shaft sprockets; brake bleeder pumps other than for vehicles; body repair kits comprised of paint spray guns, abrasive blast cleaning machines, wet-dry vacuums, parts washers, namely, high pressure washer; soldering kits consisting of electric soldering iron, and also tips, stand and cleaning sponge in a storage case all sold as a unit; miniature butane soldering torches
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Automotive and industrial hand tools, namely, revolving punches; miniature tools/pliers; automatic centering punches; utility knives; putty knives and scrapers; general purpose tubing cutters; tubing benders; spark plug tools; spark plug firing indicators; spark plug sockets; belt wrench; bit sockets; metrix hex bits; hex bits for hand drills; gasket punch set; universal joint extensions; general service sets of hand tools, namely, socket wrenches, hex bits for hand drills, ratchet wrenches, hex socket bit drivers, spark plug sockets, quick release ratchet wrenches all in a storage case; manually operated hand tools, namely, combination reversible ratcheting box/open end wrenches; flex head ratcheting box-open end wrenches; prybars; pliers; wire crimpers; wire cutters; diesel pulse adaptors; hand tools, namely, fan wrenches, cutting tools, hose pinching pliers, oil filter wrench, all-purpose snips and riveting tools; vises of metal
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Automotive and industrial hand tools, namely, revolving punches; miniature tools/pliers; miniature tools, namely, pliers; automatic centering punches; automatic centering punches being hand tools; utility knives; putty knives and scrapers; general purpose tubing cutters; tubing benders; spark plug tools; spark plug tools, namely, spark plug sockets being hand tools; spark plug firing indicators; spark spark plug sockets being hand tools; spark plug sockets; belt wrench; bit sockets being hand tools; bit sockets; metrix hex bits for hand drills; metrix hex bits; hex bits for hand drills; hand tools, namely, gasket punch set; gasket punch set; universal joint extensions in the nature of extensions for hand tools; universal joint extensions; general service sets of hand tools, namely, socket wrenches, hex bits for hand drills, ratchet wrenches, hex socket bit drivers, spark plug sockets, quick release ratchet wrenches all in a storage case; manually operated hand tools, namely, combination reversible ratcheting box/open end wrenches; flex head ratcheting box-open box and open end wrenches; flex head ratcheting box-open end wrenches; hand-operated pry bars; prybars; pliers; hand-tools, namely, wire crimpers; wire crimpers; wire cutters; hand tools, namely, fan wrenches, cutting tools, hose pinching pliers, oil filter wrench, all-purpose snips and riveting tools; diesel pulse adaptors; vises of metal; hand tool, namely, electric oxygen sensor wrench for scientific useClass 008 for Automotive and industrial hand tools, namely, revolving punches; miniature tools, namely, pliers; automatic centering punches being hand tools; utility knives; putty knives and scrapers; general purpose tubing cutters; tubing benders; spark plug tools, namely, spark plug sockets being hand tools; spark spark plug sockets being hand tools; belt wrench; bit sockets being hand tools; metrix hex bits for hand drills; hex bits for hand drills; hand tools, namely, gasket punch set; universal joint extensions in the nature of extensions for hand tools; general service sets of hand tools, namely, socket wrenches, hex bits for hand drills, ratchet wrenches, hex socket bit drivers, spark plug sockets, quick release ratchet wrenches all in a storage case; manually operated hand tools, namely, combination reversible ratcheting box/open end wrenches; flex head ratcheting box-open box and open end wrenches; hand-operated pry bars; pliers; hand-tools, namely, wire crimpers; wire cutters; hand tools, namely, fan wrenches, cutting tools, hose pinching pliers, oil filter wrench, all-purpose snips and riveting tools; vises of metal; hand tool, namely, electric oxygen sensor wrench for scientific use
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Diagnostic equipment for automotive, truck, aerospace, military vehicles, energy industry and industrial use, namely, scanners in the nature of automotive diagnostic scan tools (OBD-II scan tools), OBD-II break out box; heavy-duty scan tools for trucks; testing digital multimeters; retractable test leads; specialty circuit testers; diagnostic leak detectors for air conditioning, fuel tanks and coolants; carbon monoxide analyzers; electronic squeak and rattle finders; mechanics stethoscopes; marine mechanics stethoscopes; infrared thermometers not for medical purposes; ignition quick probes for testing ignition batteries; digital timers for lights; lead testers for vacuum pumps; diagnostic fuel injector probes for testing diesel engines; steel line stopper kits; electric oxygen sensor wrench for scientific use; battery chargers; bench chargers; battery testers; portable booster battery packs; booster battery cables; battery hydrometer; battery filler; digital manifold level gauges; vacuum pumps; thermometers not for medical purposes; digital tire pressure gauges; digital tire pressure inflators; calipers for measuring automobiles, trucks, tractors and earth moving equipment; bubble levels; tape rulers; tape measures; telescoping inspection mirrors for automotive use; combustion leak tester kits consisting of leak detectors for fuel and exhaust systems; vacuum pressure pump kit for brake testing service; micrometers; eye, ear and face safety protection equipment, namely, protective ear covering shields and safety glasses; protective work gloves; peak voltage testers for motorcycles; leak detection fluid for automotive use
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Diagnostic equipment for automotive, truck, aerospace, military vehicles, energy industry and industrial use, namely, scanners in the nature of automotive diagnostic scan tools (OBD-II scan tools), OBD-II break out box; heavy-duty scan tools for trucks; heavy-duty diagnostic scan tools for trucks; testing digital multimeters; retractable test leads; retractable test leads in the nature of electrical wires; specialty circuit testers; diagnostic leak detectors for air conditioning, fuel tanks and coolants; carbon monoxide analyzers; electronic squeak and rattle finders; mechanics stethoscopes; mechanic's stethoscopes; marine mechanics stethoscopes; marine mechanic's stethoscopes; infrared thermometers not for medical purposes; ignition quick probes for testing ignition batteries; digital timers for lights; lead testers for vacuum pumps; diagnostic fuel injector probes for testing diesel engines; steel line stopper kits; steel line stopper kits comprised of clamps for preventing leakage of automotive fluids; electric oxygen sensor wrench for scientific use; battery chargers; battery chargers, namely, bench chargers; bench chargers; battery testers; portable booster battery packs; booster battery cables; battery hydrometer; digital manifold level gauges; battery filler; vacuum pumps; thermometers not for medical purposes; digital tire pressure gauges; calipers for measuring automobiles, trucks, tractors and earth moving equipment; bubble levels; digital tire pressure inflators; tape rulers; tape measures; telescoping inspection mirrors for automotive use; combustion leak tester kits consisting of leak detectors for fuel and exhaust systems; vacuum pressure pump kit for brake testing service comprising vacuum pressure gauge, pressure pump, fluid reservoir bottle with fluid transfer and storage lids, fluid pick-up tube, multiple accessories such as tapered manifold plugs, vacuum caps and bleed screw adaptors; micrometers; eye, ear and face safety protection equipment, namely, protective ear covering shields and safety glasses; vacuum pressure pump kit for brake testing service; protective work gloves; peak voltage testers for motorcycles; spark plug firing indicators; diesel pulse electrical adaptors; leak detection fluid for automotive useClass 009 for Diagnostic equipment for automotive, truck, aerospace, military vehicles, energy industry and industrial use, namely, scanners in the nature of automotive diagnostic scan tools (OBD-II scan tools), OBD-II break out box; heavy-duty diagnostic scan tools for trucks; testing digital multimeters; retractable test leads in the nature of electrical wires; specialty circuit testers; diagnostic leak detectors for air conditioning, fuel tanks and coolants; carbon monoxide analyzers; electronic squeak and rattle finders; mechanic's stethoscopes; marine mechanic's stethoscopes; infrared thermometers not for medical purposes; ignition quick probes for testing ignition batteries; digital timers for lights; lead testers for vacuum pumps; diagnostic fuel injector probes for testing diesel engines; steel line stopper kits comprised of clamps for preventing leakage of automotive fluids; battery chargers; battery chargers, namely, bench chargers; battery testers; portable booster battery packs; booster battery cables; battery hydrometer; digital manifold level gauges; vacuum pumps; thermometers not for medical purposes; digital tire pressure gauges; calipers for measuring automobiles, trucks, tractors and earth moving equipment; bubble levels; tape rulers; tape measures; telescoping inspection mirrors for automotive use; combustion leak tester kits consisting of leak detectors for fuel and exhaust systems; vacuum pressure pump kit for brake testing service comprising vacuum pressure gauge, pressure pump, fluid reservoir bottle with fluid transfer and storage lids, fluid pick-up tube, multiple accessories such as tapered manifold plugs, vacuum caps and bleed screw adaptors; micrometers; eye, ear and face safety protection equipment, namely, protective ear covering shields and safety glasses; protective work gloves; peak voltage testers for motorcycles; spark plug firing indicators; diesel pulse electrical adaptors
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Air conditioning filters, flashlights, LED work lights for construction settings, namely, shop lights, front lights and spot lights; flexible lights, namely, portable utility lights, cordless LED work lights for construction settings
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Air conditioning filters, flashlights, LED work lights for construction settings, namely, shop lights, front lights and spot lights; Air conditioning filters; , flashlights; , LED work lights for construction settings, namely, shop lights, front lights and spot lights; flexible lights, namely, portable utility lights, cordless LED work lights for construction settings; cordless work lights for use in vehicle repair shopsClass 011 for Air conditioning filters;, flashlights;, LED work lights for construction settings, namely, shop lights, front lights and spot lights; flexible lights, namely, portable utility lights, cordless LED work lights for construction settings; cordless work lights for use in vehicle repair shops
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Shop carts; roll carts; socket rails
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Shop carts; roll carts; socket rails; digital tire pressure inflatorsClass 012 for Shop carts; roll carts; digital tire pressure inflators
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 12/31/2006 and first used in commerce at least as early as 12/31/2006 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Tote bags; travel bags for tools
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 12/31/2007 and first used in commerce at least as early as 12/31/2007 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Tote bags; travel bags for tools; travel bags for tools, sold emptyClass 018 for Tote bags; travel bags for tools, sold empty
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 12/31/2007 and first used in commerce at least as early as 12/31/2007 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Work gloves; magnetic dishes and trays
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 12/31/2000 and first used in commerce at least as early as 12/31/2000 , and is now in use in such commerce.

Proposed: Class 021 for Work gloves; magnetic dishes and trays
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 12/31/2000 and first used in commerce at least as early as 12/31/2000 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 020 for Battery filler bottles, namely, non-metal containers for storing water and featuring a spigot adapted for pouring it into dry cell batteries, sold empty; roll cabs in the nature of rolling metal tool cabinets
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 07/23/2009 and first used in commerce at least as early as 07/23/2009 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 020 . The specimen(s) submitted consists of product bearing the mark and webpage for ordering .
"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 File1

The applicant hereby appoints Gina L. Durham, Esq.. Other appointed attorneys are Keith W. Medansky, Hilary H. Remijas, Michael A. Geller, Nicole A. Chaudhari, Carissa Bouwer, Jordan Chisek, Megan Michaels, Pei Heng Li, and Eugenia Schontag. Gina L. Durham, Esq. of DLA Piper LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. Box 64807
      Chicago, Illinois 60664-0807
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com

Gina L. Durham, Esq. 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: Gina L. Durham, Esq.. Gina L. Durham, Esq. of DLA Piper LLP (US), is located at

      P.O. Box 64807
      Chicago, Illinois 60664-0807
      United States
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com; debbie.ozment@dlapiper.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Dear Madam: This communication is in response to the Office Action issued on April 23, 2019. The Trademark Examining Attorney has requested amendments to the identification of goods and services. The Examining Attorney also raised issue with respect to the application's conformance with multiple-class application requirements, and asked for clarification of the mark's description. Amendment of Identification of Goods and Services The Examining Attorney has objected to a number of goods and services in the identification, finding that they are worded too broadly. Of these terms, the Applicant accepts the Examining Attorney's proposed amendments to "diesel fuel system cleaning fluid", "roll cabs", "trays of metal", "die grinders", "pencil die grinders", "air swivel connectors", "engine hoists and slings", "valve core and stem tools", "miniature tools/pliers", "centering punches", "spark plug tools", "spark plug sockets", "bit sockets", "metrix hex bits", "gasket punch set", "universal joint extensions", "flex head ratcheting box open end wrenches", "prybars", "wire crimpers", "diesel pulse adaptors", "heavy-duty scan tools for trucks", "retractable test leads", "bench chargers", and "socket rails". As for "pneumatic blow guns" (class 7), "power transmission jacks" (class 7), and "OBD-II break out box" (class 9), "magnetic dishes and trays" (class 21), all of these terms have been allowed and are registered in Applicant's current registration for BLUE-POINT (Reg. No. 5194118). Applicant respectfully requests that the Examiner review this registration, and submits that since these terms have been allowed in a recently allowed application, they should be allowed in the instant application as well. With respect to "cordless work lights" (class 7), "steel line stopper kits" (class 9), "vacuum pressure pump kit for brake testing service" (class 9), Applicant submits amendments to these terms as shown below. The Applicant accepts the reclassification of goods and services as proposed by the Examining Attorney. Overall, the Applicant submits the following amended identification of goods and services: International Class 001: Chemical preparation, namely, diesel fuel system cleaning fluid; chemical leak detection fluid for automotive use International Class 003: Buffing kits comprised of buffing compound for buffing paint on automobiles, trucks, boats, aircraft and military vehicles International Class 006: Roll cabs; tool storage chests of metal sold empty; tool accessory trays of metal sold empty; metal socket rails International Class 007: Automotive and industrial power tools, namely, power-operated impact wrenches; cordless power-operated ratchet wrenches; cordless power drills; cordless work lights; power-operated air drills; power-operated air hammer; die grinders being power tools; pencil die grinders being power tools; air power-operated punch tool; electric air-powered sanders, namely, orbital, disc, in-line and jitterbug sanders, belt sanders; power-operated tire buffer; power-operated pinstripe removal tool; power-operated needle scaler; finishing tools, namely, power-operated polisher; power drill bits; cutting and grinding accessories, namely, grinder/finisher kits comprised of grinders, grinder discs, shank adaptor, spanner wrenches all sold as a unit; pneumatic blow guns; parts for pneumatic blow guns, namely, air swivel connectors; laser engraving pens, being parts of machines; transmission boot and joint tools, namely, boot tool, joint clamps, boot installer, air regulator, and rack and pinion tools; motorcycle power jacks; automobile power jacks; truck power jacks; power jack stands; power transmission jacks; hydraulic jacks; engine hoists; and engine slings in the nature of a cables for engine hoists; valve core and stem tools, namely, power-operated valve core removers; camshaft pulley tool namely, electric pulley blocks, oil filter crusher, timing belt tension compressor for engines for land vehicles; electric timing belt tension compressor; power-operated lock tool for cam shaft sprockets; brake bleeder pumps other than for vehicles; body repair kits comprised of paint spray guns, abrasive blast cleaning machines, wet-dry vacuums, parts washers, namely, high pressure washer; soldering kits consisting of electric soldering iron, and also tips, stand and cleaning sponge in a storage case all sold as a unit; miniature butane soldering torches International Class 008: Automotive and industrial hand tools, namely, revolving punches; miniature tools, namely, /pliers; automatic centering punches being hand tools; utility knives; putty knives and scrapers; general purpose tubing cutters; tubing benders; spark plug tools, namely, spark plug sockets being hand tools; spark plug firing indicators; spark plug sockets being hand tools; belt wrench; bit sockets being hand tools; metrix hex bits for hand drills; hex bits for hand drills; hand tools, namely, gasket punch set; universal joint extensions in the nature of extensions for hand tools; general service sets of hand tools, namely, socket wrenches, hex bits for hand drills, ratchet wrenches, hex socket bit drivers, spark plug sockets, quick release ratchet wrenches all in a storage case; manually operated hand tools, namely, combination reversible ratcheting box/open end wrenches; flex head ratcheting box-open box and open end wrenches; hand-operated pry bars prybars; pliers; hand-tools, namely, wire crimpers; wire cutters; diesel pulse adaptors; hand tools, namely, fan wrenches, cutting tools, hose pinching pliers, oil filter wrench, all-purpose snips and riveting tools; vises of metal; hand tool, namely, electric oxygen sensor wrench for scientific use International Class 009: Diagnostic equipment for automotive, truck, aerospace, military vehicles, energy industry and industrial use, namely, scanners in the nature of automotive diagnostic scan tools (OBD-II scan tools), OBD-II break out box; heavy-duty diagnostic scan tools for trucks; testing digital multimeters; retractable test leads in the nature of electrical wires; specialty circuit testers; diagnostic leak detectors for air conditioning, fuel tanks and coolants; carbon monoxide analyzers; electronic squeak and rattle finders; mechanics mechanic's stethoscopes; marine mechanics mechanic's stethoscopes; infrared thermometers not for medical purposes; ignition quick probes for testing ignition batteries; digital timers for lights; lead testers for vacuum pumps; diagnostic fuel injector probes for testing diesel engines; steel line stopper kits comprised of clamps for preventing leakage of automotive fluids; electric oxygen sensor wrench for scientific use; battery chargers; battery chargers, namely, bench chargers; battery testers; portable booster battery packs; booster battery cables; battery hydrometer; battery filler; digital manifold level gauges; vacuum pumps; thermometers not for medical purposes; digital tire pressure gauges; digital tire pressure inflators; calipers for measuring automobiles, trucks, tractors and earth moving equipment; bubble levels; tape rulers; tape measures; telescoping inspection mirrors for automotive use; combustion leak tester kits consisting of leak detectors for fuel and exhaust systems; vacuum pressure pump kit for brake testing service comprising vacuum pressure gauge, pressure pump, fluid reservoir bottle with fluid transfer and storage lids, fluid pick-up tube, multiple accessories such as tapered manifold plugs, vacuum caps and bleed screw adaptors; micrometers; eye, ear and face safety protection equipment, namely, protective ear covering shields and safety glasses; protective work gloves; peak voltage testers for motorcycles; leak detection fluid for automotive use; spark plug firing indicators; diesel pulse electrical adaptors International Class 011: Air conditioning filters;, flashlights;, LED work lights for construction settings, namely, shop lights, front lights and spot lights; flexible lights, namely, portable utility lights, cordless LED work lights for construction settings; cordless work lights for use in vehicle repair shops International Class 012: Shop carts; roll carts; socket rails; digital tire pressure inflators International Class 018: Tote bags; travel bags for tools, sold empty International Class 020: Battery filler bottles, namely, non-metal containers for storing water and featuring a spigot adapted for pouring it into dry cell batteries, sold empty; roll cabs in the nature of rolling metal tool cabinets International Class 021: Work gloves; magnetic dishes and trays Multiple-class Application Requirements With this response, the application submits a specimen of use and makes the required filing fee for the additional class 20, added as a result of this response. The date of first use and date of first use in commerce for this class is 07/23/2009. Mark Description Applicant respectfully advises that it will retain the current description of the mark since other worldwide registrations, including its IR 1474944 , have already adopted this wording.


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: /Richard Miller/      Date: 10/23/2019
Signatory's Name: Richard T. Miller
Signatory's Position: Vice President, General Counsel and Secretary
Signatory's Phone Number: 262-656-7926


Response Signature
Signature: /Pei Heng Li/     Date: 10/23/2019
Signatory's Name: Pei Heng Li
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 650-833-2043

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:    Gina L. Durham, Esq.
   DLA Piper LLP (US)
   P.O. Box 64807
   Chicago, Illinois 60664-0807
        
RAM Sale Number: 88284223
RAM Accounting Date: 10/23/2019
        
Serial Number: 88284223
Internet Transmission Date: Wed Oct 23 12:38:30 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201910231238305
88827-88284223-6108af24974eb44eebc1f174b
98d3b67827ac6946d28ed322ae38ed8dcea8d53d
-DA-38237757-20191022180901175518