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. 88311698 AST(Standard Characters, see http://uspto.report/TM/88311698/mark.png) has been amended as follows:

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

Remarks

The following remarks are responsive to the May 3, 2019 Office Action. Applicant notes that the deadline for responding to this Office Action fell on a weekend, Sunday, November 3, 2019. Therefore, this response is timely filed the following business day, Monday, November 4, 2019. In view of the following remarks, Applicant respectfully requests passage of the applied-for mark to publication.

Applicant notes that the Examining Attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration of the applied-for mark.

Registration of this applied-for mark has been refused, however, since the Office Action submits that the applied-for mark is merely descriptive of the goods. In response to this refusal, Applicant has amended the application to seek registration on the Supplemental Register by submitting a specimen of use and the dates of first use of the applied-for mark. Therefore, withdrawal of this refusal is respectfully requested.

The Office Action also submits that the applied-for mark appears to be generic of the goods identified in the present application. Applicant respectfully disagrees with this interpretation of the applied-for mark. Applicant notes that the Office Action submits that the applied-for mark “appears to be” generic for the goods in the present application, but has not affirmatively asserted that the applied-for mark has been interpreted as such. Applicant requests further explanation regarding these comments in the Office Action.

Applicant also notes that the two-part inquiry for establishing genericness of a mark has not been used in the present Office Action. A two-part inquiry is used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? In the present application, the goods are directed to fluid storage tanks and dry goods storage tanks. Applicant respectfully submits, however, it has not been clearly established that the relevant public understands that the designation primarily refers to this genus of goods. (“ The examining attorney has the burden of proving that a term is generic by clear evidence.” – TMEP Section 1209.01(c)(i)). Therefore, Applicant respectfully submits that sufficient evidence for interpreting the applied-for mark as being generic has not been produced with this Office Action.

The Office Action further submits that the description of goods needs to be clarified. According to the Examining Attorney’s suggestions in the Office Action, Applicant has amended the description of goods as follows:

            Class 11 has been deleted

            New Class 6: “Metal fluid storage tanks; metal storage tanks, namely, dry goods storage tanks”; and

            New Class 20: “Plastic fluid storage tanks; Plastic storage tanks, namely, dry goods storage tanks; Fiberglass fluid storage tanks; Fiberglass storage tanks, namely, dry goods storage tanks”.

Therefore, in view of these amendments, Applicant respectfully submits that the descriptions of goods are sufficiently definite. Withdrawal of this refusal is respectfully requested.

Conclusion

In view of the foregoing amendments and remarks, Applicant respectfully requests reconsideration of the refusal and passage of the applied-for mark to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 011 for fluid storage tanks; dry goods storage tanks

Applicant hereby adds the following class of goods/services to the application:
New: Class 006 (Original Class: 011 ) for Metal fluid storage tanks; metal storage tanks, namely, dry goods storage tanks
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 01/00/2017 and first used in commerce at least as early as 01/00/2017 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 006 . The specimen(s) submitted consists of photograph of a tag bearing the applied-for mark that is affixed to the goods .
"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 hereby adds the following class of goods/services to the application:
New: Class 020 for Plastic fluid storage tanks; Plastic storage tanks, namely, dry goods storage tanks; Fiberglass fluid storage tanks; Fiberglass storage tanks, namely, dry goods storage tanks
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 01/00/2017 and first used in commerce at least as early as 01/00/2017 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 020 . The specimen(s) submitted consists of photograph of a tag bearing the applied-for mark that is affixed to the goods .
"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's current attorney information: Christian E. Schuster, Reg. No. 43,908. Christian E. Schuster, Reg. No. 43,908 of THE WEBB LAW FIRM, is located at

      ONE GATEWAY CENTER
      420 FT. DUQUESNE BLVD. STE. 1200
      PITTSBURGH, Pennsylvania 15222
      US
The docket/reference number is 6705-1807993.

The phone number is 412-471-8815.

The fax number is 412-471-4094.

The email address is trademarks@webblaw.com

The applicants proposed attorney information: Christian E. Schuster, Reg. No. 43,908. Christian E. Schuster, Reg. No. 43,908 of THE WEBB LAW FIRM, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ONE GATEWAY CENTER
      420 FT. DUQUESNE BLVD. STE. 1200
      PITTSBURGH, Pennsylvania 15222
      United States
The docket/reference number is 6705-1807993.

The phone number is 412-471-8815.

The fax number is 412-471-4094.

The email address is trademarks@webblaw.com

Christian E. Schuster, Reg. No. 43,908 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: CHRISTIAN E. SCHUSTER, REG. NO. 43,908. CHRISTIAN E. SCHUSTER, REG. NO. 43,908 of THE WEBB LAW FIRM, is located at

      ONE GATEWAY CENTER
      420 FT. DUQUESNE BLVD. STE. 1200
      PITTSBURGH, Pennsylvania 15222
      US
The docket/reference number is 6705-1807993.

The phone number is 412-471-8815.

The fax number is 412-471-4094.

The email address is trademarks@webblaw.com

The applicants proposed correspondence information: Christian E. Schuster, Reg. No. 43,908. Christian E. Schuster, Reg. No. 43,908 of THE WEBB LAW FIRM, is located at

      ONE GATEWAY CENTER
      420 FT. DUQUESNE BLVD. STE. 1200
      PITTSBURGH, Pennsylvania 15222
      United States
The docket/reference number is 6705-1807993.

The phone number is 412-471-8815.

The fax number is 412-471-4094.

The email address is trademarks@webblaw.com

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


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: /cps/      Date: 11/04/2019
Signatory's Name: Christopher P. Sherwin
Signatory's Position: Attorney of Record, PA bar member
Signatory's Phone Number: 412-471-8815


Response Signature
Signature: /cps/     Date: 11/04/2019
Signatory's Name: Christopher P. Sherwin
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 412-471-8815

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:    CHRISTIAN E. SCHUSTER, REG. NO. 43,908
   THE WEBB LAW FIRM
   ONE GATEWAY CENTER
   420 FT. DUQUESNE BLVD. STE. 1200
   PITTSBURGH, Pennsylvania 15222
Mailing Address:    Christian E. Schuster, Reg. No. 43,908
   THE WEBB LAW FIRM
   ONE GATEWAY CENTER
   420 FT. DUQUESNE BLVD. STE. 1200
   PITTSBURGH, Pennsylvania 15222
        
RAM Sale Number: 88311698
RAM Accounting Date: 11/04/2019
        
Serial Number: 88311698
Internet Transmission Date: Mon Nov 04 16:47:58 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911041647589
86057-88311698-7001ac7f3881e742979f11d84
7e628a877989b2cc07536645eb54fde8dcae9c31
-CC-47571075-20191104164634970683