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. 88336518 TOTALCLEAN(Standard Characters, see http://uspto.report/TM/88336518/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of arguments and evidence in favor of registration has been attached.
Original PDF file:
evi_711254634-20190920134355104722_._Response_to_Office_Action.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for disinfectant wipes and sprays, disinfectant hand washes, disinfectant soaps, disinfectants for dental and medical instruments and equipment, sanitizing wipes, hand sanitizers, antibacterial hand foam, antibacterial hand washes, all for use in a dental or hospital/medical setting
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1949086 filed 03/01/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: disinfectant wipes and sprays, disinfectant hand washes, disinfectant soaps, disinfectants for dental and medical instruments and equipment, sanitizing wipes, hand sanitizers, antibacterial hand foam, antibacterial hand washes, all for use in a dental or hospital/medical setting; Disinfectant wipes and disinfectant sprays for use by dentists, doctors and their patients in a dental, hospital or medical settingClass 005 for Disinfectant wipes and disinfectant sprays for use by dentists, doctors and their patients in a dental, hospital or medical setting
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1949086 filed 03/01/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is Y378.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

The applicants proposed attorney information: Jess M. Collen. Other appointed attorneys are Audra Kemp. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is Y378.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

Jess M. Collen 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: JESS M. COLLEN. JESS M. COLLEN of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is Y378.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com; tmcollen@collenip.com

The applicants proposed correspondence information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is Y378.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com; tmcollen@collenip.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_711254634-134355104_._Pedneault__the_Corporate_Controller_of_the_Applicant__190320.PDF
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Corey Pedneault
Signatory's Position: Corporate Controller

Response Signature
Signature: /audra kemp/     Date: 09/20/2019
Signatory's Name: Audra Kemp
Signatory's Position: Senior Associate Attorney, Collen IP, NY State Bar member

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:    JESS M. COLLEN
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
Mailing Address:    Jess M. Collen
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
        
Serial Number: 88336518
Internet Transmission Date: Fri Sep 20 13:55:08 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190920135508108
571-88336518-610d10e7b77eb0ebe5e3bf83e50
f991d425e390d2b6a6bf1327f77070ce8150-N/A
-N/A-20190920134355104722