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. 88345851 WESCO(Standard Characters, see http://uspto.report/TM/88345851/mark.png) has been amended as follows:

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

In response to the Office Action dated June 4, 2019, Applicant amends the application to assert a claim under Section 2(f) based on U.S. Reg. No. 4270204, and requests that the Section 2(e)(4) refusal be withdrawn. Evidence of renewal of the foreign registration relied upon for the Section 44(e) basis is submitted herewith. A statement confirming Applicant's Country of Origin is submitted. The goods are amended in light of the request for clarification in the Office Action. Applicant respectfully requests that the application be approved for publication and registration.

EVIDENCE
Evidence in the nature of Evidence of renewal of the foreign registration relied upon for the Section 44(e) basis, from the EUIPO. has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_38801130-20190611095520536139_._EUReg1462144-WESCO-Renewal.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Power operated tools, namely, drills, drill hammers; power operated lawn and garden tools, namely, grass/weed trimmers, shredders; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cranes; Power operated tools, namely, drilling machines, impact drills, hammer drills, screwdrivers, saws, grinders, sanders, polishers, buffers, cutting machines, routers, planers, nailing guns, nailers, staple guns, staplers, air compressors; bits for power drills; blades for power saws; power operated lawn and garden tools, namely, blowers, shears, grass trimmers, hedge trimmers, hedge cutters, chain saws, lawn mowers, lawn edgers, yard vacuums, mulchers; garden shredders; high pressure washers; vacuum cleaners; spray guns for paint; drill presses; pumps, namely, submersible pumps, centrifugal pumps; lawn and garden equipment, namely, power-operated electric jet pumps and fountain water pumps for water fountains; electric welding machines; lathes; hot glue guns, engraving machines
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of __________ and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Power operated tools, namely, drills, drill hammers; Power operated tools, namely, drills; power operated lawn and garden tools, namely, grass/weed trimmers, shredders; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cranes; Power operated tools, namely, drilling machines, impact drills, hammer drills, screwdrivers, saws, grinders, sanders, polishers, buffers, cutting machines, routers, planers, nailing guns, nailers, staple guns, staplers, air compressors; Power operated tools, namely, drilling machines, impact drills, hammer drills, screwdrivers, saws, grinders, sanders, polishers, buffers, cutting machines, routers, planers, nailing guns, staple guns, staplers, air compressors; bits for power drills; blades for power saws; power operated lawn and garden tools, namely, blowers, shears, grass trimmers, hedge trimmers, hedge cutters, chain saws, lawn mowers, lawn edgers, yard vacuums, mulchers; power operated lawn and garden tools, namely, blowers, shears, grass trimmers, hedge trimmers, hedge cutters, chain saws, lawn mowers, lawn edgers, lawn vacuums, mulchers; garden shredders; high pressure washers; vacuum cleaners; spray guns for paint; drill presses; pumps, namely, submersible pumps, centrifugal pumps; lawn and garden equipment, namely, power-operated electric jet pumps and fountain water pumps for water fountains; electric welding machines; lathes; hot glue guns, engraving machines; hot melt glue guns, engraving machinesClass 007 for Power operated tools, namely, drills; power operated lawn and garden tools, namely, grass/weed trimmers, shredders; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cranes; Power operated tools, namely, drilling machines, impact drills, hammer drills, screwdrivers, saws, grinders, sanders, polishers, buffers, cutting machines, routers, planers, nailing guns, staple guns, staplers, air compressors; bits for power drills; blades for power saws; power operated lawn and garden tools, namely, blowers, shears, grass trimmers, hedge trimmers, hedge cutters, chain saws, lawn mowers, lawn edgers, lawn vacuums, mulchers; garden shredders; high pressure washers; vacuum cleaners; spray guns for paint; drill presses; pumps, namely, submersible pumps, centrifugal pumps; lawn and garden equipment, namely, power-operated electric jet pumps and fountain water pumps for water fountains; electric welding machines; lathes; hot melt glue guns, engraving machines
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of 04/05/2015 and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-38801130-095520536_._EUIPOReg-004352911.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for vises; clamps; hand held tools, namely, drill bits, screwdriver bits, saw blades, grinding wheels, sanding discs, abrading discs
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of __________ and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: vises; clamps; hand tools, namely, clamps; hand held tools, namely, drill bits, screwdriver bits, saw blades, grinding wheels, sanding discs, abrading discs; hand held tools, namely, drill bits, screwdriver bits, saw blades, manually-operated grinding wheels, sanding discs for non-electric sanders, abrading discsClass 008 for vises; hand tools, namely, clamps; hand held tools, namely, drill bits, screwdriver bits, saw blades, manually-operated grinding wheels, sanding discs for non-electric sanders, abrading discs
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of 04/05/2015 and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-38801130-095520536_._EUIPOReg-004352911.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Battery chargers for power tools and power operated lawn and garden tools; Batteries for power operated tools and power operated lawn and garden tools, loudspeakers; radios; lasers for measuring; levels in the nature of instruments for determining the horizontal; carpenter's levels
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of __________ and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Battery chargers for power tools and power operated lawn and garden tools; Batteries for power operated tools and power operated lawn and garden tools, loudspeakers; radios; lasers for measuring; levels in the nature of instruments for determining the horizontal; carpenter's levelsClass 009 for Battery chargers for power tools and power operated lawn and garden tools; Batteries for power operated tools and power operated lawn and garden tools, loudspeakers; radios
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 004352911 registered 10/10/2007 with a renewal date of 04/05/2015 and an expiration date of 03/22/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-38801130-095520536_._EUIPOReg-004352911.pdf
Converted PDF file(s) ( 8 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4270204.


Miscellaneous Statement
Applicant has had a bona fide and effective industrial or commercial establishment within the European Union as of the date of issuance of the foreign registration.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4270204


SIGNATURE(S)
Response Signature
Signature: /Scot A. Duvall/     Date: 06/11/2019
Signatory's Name: Scot A. Duvall
Signatory's Position: Attorney of record, Kentucky bar member

Signatory's Phone Number: 502-625-2784

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: 88345851
Internet Transmission Date: Tue Jun 11 10:25:57 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201906111025579042
10-88345851-6203fd87f5c6e2be8920eb71d706
924435bd460b32566b0b9f69fbc44a971a3d-N/A
-N/A-20190611095520536139