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. 88310864 SMOOTH-ON(Standard Characters, see http://uspto.report/TM/88310864/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 flexible silicone, polysulfide, and urethane molding compounds; silicones, polysulfides, and urethanes for use in mold making processes; flexible rubber compounds for use in the manufacture of architectural and structural molds and castings; flexible rubber compounds for use in the manufacture of molds and castings for industrial, commercial, special effects, theatrical, prosthetic, and artistic applications; flexible rubber molding compounds for the casting of a variety of articles, namely, articles made from concrete, gypsum, plaster, wax, metal alloys, resins, urethanes, epoxies, polyester and silicones; unprocessed plastics in liquid form; casting resins for general casting purposes; urethane casting resins; epoxy casting compounds; casting resins used for industrial, commercial, and artistic applications; industrial adhesives for bonding and repair purposes; epoxy adhesives; release agents for use in molding and casting applications; epoxy putty for creating and repairing three dimensional objects; casting foam for use in sculptural, architectural, theatrical, padding, cushioning, and special effects applications; cure retardants for silicone rubber products
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed:
Tracked Text Description: flexible silicone, polysulfide, and urethane molding compounds; flexible silicone, polysulfide, and urethane molding compounds for commercial, industrial and artistic applications; silicones, polysulfides, and urethanes for use in mold making processes; silicones, polysulfides, and urethanes for use in mold making processes for commercial, industrial and artistic applications; flexible rubber compounds for use in the manufacture of architectural and structural molds and castings; flexible rubber compounds for use in the manufacture of molds and castings for industrial, commercial, special effects, theatrical, prosthetic, and artistic applications; flexible rubber molding compounds for the casting of a variety of articles, namely, articles made from concrete, gypsum, plaster, wax, metal alloys, resins, urethanes, epoxies, polyester and silicones; flexible rubber molding compounds for the casting of a variety of articles, namely, articles made from concrete, gypsum, plaster, wax, metal alloys, resins, urethanes, epoxies, polyester and silicones for commercial, industrial and artistic applications; unprocessed plastics in liquid form; unprocessed plastics in liquid form for commercial, industrial and artistic applications; casting resins for general casting purposes; semi-processed casting resins for general casting purposes; urethane casting resins; urethane casting resins for commercial, industrial, and artistic applications; epoxy casting compounds; epoxy casting compounds for commercial, industrial, and artistic applications; casting resins used for industrial, commercial, and artistic applications; semi-processed casting resins used for industrial, commercial, and artistic applications; industrial adhesives for bonding and repair purposes; epoxy adhesives; epoxy adhesives in the nature of glue for general bonding and repair purposes; release agents for use in molding and casting applications; release agents for use in molding and casting applications for commercial, industrial, and artistic applications; epoxy putty for creating and repairing three dimensional objects; moldable epoxy putty used to create and repair three dimensional objects for commercial, industrial, and artistic applications; casting foam for use in sculptural, architectural, theatrical, padding, cushioning, and special effects applications; casting foam resins for use in sculptural, architectural, theatrical, padding, cushioning, and special effects applications; cure retardants for silicone rubber products; cure retardant compositions for silicone rubber productsClass 001 for flexible silicone, polysulfide, and urethane molding compounds for commercial, industrial and artistic applications; silicones, polysulfides, and urethanes for use in mold making processes for commercial, industrial and artistic applications; flexible rubber compounds for use in the manufacture of architectural and structural molds and castings; flexible rubber compounds for use in the manufacture of molds and castings for industrial, commercial, special effects, theatrical, prosthetic, and artistic applications; flexible rubber molding compounds for the casting of a variety of articles, namely, articles made from concrete, gypsum, plaster, wax, metal alloys, resins, urethanes, epoxies, polyester and silicones for commercial, industrial and artistic applications; unprocessed plastics in liquid form for commercial, industrial and artistic applications; semi-processed casting resins for general casting purposes; urethane casting resins for commercial, industrial, and artistic applications; epoxy casting compounds for commercial, industrial, and artistic applications; semi-processed casting resins used for industrial, commercial, and artistic applications; industrial adhesives for bonding and repair purposes; epoxy adhesives in the nature of glue for general bonding and repair purposes; release agents for use in molding and casting applications for commercial, industrial, and artistic applications; moldable epoxy putty used to create and repair three dimensional objects for commercial, industrial, and artistic applications; casting foam resins for use in sculptural, architectural, theatrical, padding, cushioning, and special effects applications; cure retardant compositions for silicone rubber products
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 12/31/1895 and first used in commerce at least as early as 12/31/1895 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for colorants, tints, and color pigments; metals in compound and powder form for producing metallic, glitter, iridescent and color effects; fluorescent color pigments for rubbers, plastics, and rigid and flexible foams; coatings, namely, wax sealers used to seal and coat porous surfaces and urethane coatings to provide impact resistant surfaces
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed:
Tracked Text Description: colorants, tints, and color pigments; metals in compound and powder form for producing metallic, glitter, iridescent and color effects; metals in compound and powder form for producing metallic, glitter, iridescent and color effects for commercial, industrial, special effects, theatrical, and artistic applications; fluorescent color pigments for rubbers, plastics, and rigid and flexible foams; coatings, namely, wax sealers used to seal and coat porous surfaces and urethane coatings to provide impact resistant surfacesClass 002 for colorants, tints, and color pigments; metals in compound and powder form for producing metallic, glitter, iridescent and color effects for commercial, industrial, special effects, theatrical, and artistic applications; fluorescent color pigments for rubbers, plastics, and rigid and flexible foams; coatings, namely, wax sealers used to seal and coat porous surfaces and urethane coatings to provide impact resistant surfaces
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 12/31/1965 and first used in commerce at least as early as 12/31/1965 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for special effects makeup; theatrical makeup; three-dimensional makeup for special effects; prosthetic makeup
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed: Class 003 for special effects makeup; theatrical makeup; three-dimensional makeup for special effects; prosthetic makeup
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 12/11/2007 and first used in commerce at least as early as 12/11/2007 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 003 . The specimen(s) submitted consists of Labels and web pages with online ordering functions showing the mark identified with goods sold in commerce .
"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].
Original PDF file:
SPU2-21616416951-20190904101135939173_._C3_Specimen__Dragon_Skin_Label_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-21616416951-20190904101135939173_._C3_Specimen__Dragon_Skin_Webpage_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-21616416951-20190904101135939173_._C3_Specimen_Zombie_Kit_Webpage_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-21616416951-20190904101135939173_._C3_Specimen__Skin_Tite_Label_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for printed instructional teaching materials, manuals, catalogs, and publications in the field of mold making, casting, and other applications for rubber molds and casting resins
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed:
Tracked Text Description: printed instructional teaching materials, manuals, catalogs, and publications in the field of mold making, casting, and other applications for rubber molds and casting resins; printed instructional teaching materials, manuals, catalogs, and publications being bulletins and booklets in the field of mold making, casting, and other applications for rubber molds and casting resinsClass 016 for printed instructional teaching materials, manuals, catalogs, and publications being bulletins and booklets in the field of mold making, casting, and other applications for rubber molds and casting resins
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 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 submits one(or more) specimen(s) for Class 016 . The specimen(s) submitted consists of Instructional booklet sold in commerce and technical bulletins showing the mark .
"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].
Original PDF file:
SPU3-21616416951-20190904101135939173_._C16__Mold_Max_TB_.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2
Original PDF file:
SPU3-21616416951-20190904101135939173_._C16_Specimen__How-To__Booklet.pdf
Converted PDF file(s) ( 19 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Specimen File14
Specimen File15
Specimen File16
Specimen File17
Specimen File18
Specimen File19

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for silicone, polysulfide, and urethane rubbers; flexible rubbers used in the manufacture of rubber molds and molded rubber articles, namely, articles for industrial, commercial, or artistic applications; flexible rubbers for use in the manufacture of architectural and structural molds; flexible rubbers used to create special effects, theatrical, prosthetic, and orthopedic and cushioning appliances; clear flexible rubber used for encapsulating and display applications; flexible plastics used for casting applications, namely, industrial, commercial, or artistic applications
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed:
Tracked Text Description: silicone, polysulfide, and urethane rubbers; flexible rubbers used in the manufacture of rubber molds and molded rubber articles, namely, articles for industrial, commercial, or artistic applications; flexible liquid rubbers used in the manufacture of rubber molds and molded rubber articles, namely, articles for industrial, commercial, or artistic applications; flexible rubbers for use in the manufacture of architectural and structural molds; flexible liquid rubbers for use in the manufacture of architectural and structural molds; flexible rubbers used to create special effects, theatrical, prosthetic, and orthopedic and cushioning appliances; flexible liquid rubbers used to create special effects, theatrical, prosthetic, and orthopedic and cushioning appliances; clear flexible rubber used for encapsulating and display applications; clear flexible liquid rubber used for encapsulating and display applications; flexible plastics used for casting applications, namely, industrial, commercial, or artistic applications; flexible liquid plastics used for casting applications, namely, industrial, commercial, or artistic applicationsClass 017 for silicone, polysulfide, and urethane rubbers; flexible liquid rubbers used in the manufacture of rubber molds and molded rubber articles, namely, articles for industrial, commercial, or artistic applications; flexible liquid rubbers for use in the manufacture of architectural and structural molds; flexible liquid rubbers used to create special effects, theatrical, prosthetic, and orthopedic and cushioning appliances; clear flexible liquid rubber used for encapsulating and display applications; flexible liquid plastics used for casting applications, namely, industrial, commercial, or artistic applications
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 09/23/1996 and first used in commerce at least as early as 09/23/1996 , 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 educational services, namely, classes and seminars in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing a website featuring blogs, technical support services, and other and instructional information in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing an online community forum for artisans and craftsman utilizing molding rubbers and casting resins
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 00/00/1967 and first used in commerce at least as early as 00/00/1967 , and is now in use in such commerce.

Proposed:
Tracked Text Description: educational services, namely, classes and seminars in the fields of mold making, casting, and other applications for liquid rubbers and resins; educational services, namely, providing classes and seminars in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing a website featuring blogs, technical support services, and other and instructional information in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing a website featuring blogs, technical support services, and instructional information in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing an online community forum for artisans and craftsman utilizing molding rubbers and casting resinsClass 041 for educational services, namely, providing classes and seminars in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing a website featuring blogs, technical support services, and instructional information in the fields of mold making, casting, and other applications for liquid rubbers and resins; providing an online community forum for artisans and craftsman utilizing molding rubbers and casting resins
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 11/11/2011 and first used in commerce at least as early as 11/11/2011 , and is now in use in such commerce.
The applicant's current attorney information: Kevin Hickey. Kevin Hickey of SMOOTH-ON, INC., is located at

      5600 LOWER MACUNGIE RD
      MACUNGIE, Pennsylvania 18062
      US

The phone number is 610-252-5800.

The fax number is 610-252-6200.

The email address is khickey@smooth-on.com

The applicants proposed attorney information: Kevin Hickey. Kevin Hickey of SMOOTH-ON, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      5600 LOWER MACUNGIE RD
      MACUNGIE, Pennsylvania 18062
      United States

The phone number is 610-252-5800.

The fax number is 610-252-6200.

The email address is khickey@smooth-on.com

Kevin Hickey 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: KEVIN HICKEY. KEVIN HICKEY of SMOOTH-ON, INC., is located at

      5600 LOWER MACUNGIE RD
      MACUNGIE, Pennsylvania 18062
      US

The phone number is 610-252-5800.

The fax number is 610-252-6200.

The email address is khickey@smooth-on.com; khickey@smooth-on.com

The applicants proposed correspondence information: Kevin Hickey. Kevin Hickey of SMOOTH-ON, INC., is located at

      5600 LOWER MACUNGIE RD
      MACUNGIE, Pennsylvania 18062
      United States

The phone number is 610-252-5800.

The fax number is 610-252-6200.

The email address is khickey@smooth-on.com

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: /Kevin Hickey/      Date: 09/04/2019
Signatory's Name: Kevin Hickey
Signatory's Position: House Counsel
Signatory's Phone Number: 6102525800


Response Signature
Signature: /Kevin Hickey/     Date: 09/04/2019
Signatory's Name: Kevin Hickey
Signatory's Position: House Counsel

Signatory's Phone Number: 6102525800

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:    KEVIN HICKEY
   SMOOTH-ON, INC.
   
   5600 LOWER MACUNGIE RD
   MACUNGIE, Pennsylvania 18062
Mailing Address:    Kevin Hickey
   SMOOTH-ON, INC.
   5600 LOWER MACUNGIE RD
   MACUNGIE, Pennsylvania 18062
        
Serial Number: 88310864
Internet Transmission Date: Wed Sep 04 11:18:40 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201909041118407
84419-88310864-6104d596a569ff5f5f4487e3e
27190527ddc32e8ed0f4beb5dec3f6111115da-N
/A-N/A-20190904101135939173