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. 88303239 ULTRACOAT(Standard Characters, see http://uspto.report/TM/88303239/mark.png) has been amended as follows:

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

The Examiner has refused registration on the basis of a likelihood of confusion with US Registration 4,370,393 for ULTRACOAT.

 Applicant is the owner of registered trademark 5,115,549 for ULTRACOAT in connection with low VOC epoxy coatings for use in underground pipelines and storage tanks.  The owner of the present application, Warren Composites International is a wholly owned subsidiary of the listed owner on this registration, Warren Environmental & Coating.  Accordingly the present application is co-owned with this prior registration.  This registration was issued in 2007 based on use in commerce and has coexisted without confusion for over 10 years.  This is because the Registrant and present applicant are in entirely different channels of trade relative to the owner, Mapei,

Mapei manufactures flooring for use in commercial and residential dwellings and as such the coatings they apply to their flooring under the name ULTRACOAT  are all seen and purchased by building owners and building finish trades. 

In contrast, the present applicant provides their bulk epoxy materials to industrial pipe coaters for lining and refinishing of sewage and water pipes in an industrial setting.  At no time would a likely consumer be confronted with the Mapei and Warren products in a side by side situation such that a likelihood of confusion could exist.  The Applicant has limited their goods to underscore this difference.  Further, the fact that the two trademarks have co-existed side by side for over a decade without any confusion also undercuts the position of the Examiner that likelihood of confusion as between these goods exists. 

In addition US Registration 1,462,800 for ULTRACOTE in connection with polyester films and US Registration 2,864,287 for ULTRACOAT in connection with coatings for metal playground equipment have also coexisted alongside for well over a decade.  Clearly these four instances of ULTRACOAT have coexisted for over a decade without any actual confusion.  Accordingly, based on actual use in commerce no evidence of likelihood of confusion exists and this refusal must be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Epoxy resins, unprocessed
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 05/00/2007 and first used in commerce at least as early as 05/00/2007 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Epoxy resins, unprocessed; low VOC epoxy coatings for use in underground pipelines and storage tanksClass 001 for low VOC epoxy coatings for use in underground pipelines and storage tanks
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 05/00/2007 and first used in commerce at least as early as 05/00/2007 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /mark e. tetreault/     Date: 05/09/2019
Signatory's Name: Mark E. Tetreault
Signatory's Position: Attorney for the Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88303239
Internet Transmission Date: Thu May 09 14:31:56 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201905091431569
18206-88303239-62033542e4194789d3ab39769
b3b0fb5a65d3e37363539fce289d3220e6ea66db
1a-N/A-N/A-20190509141156959290