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. 88345967 THE ROCK ZERO(Standard Characters, see http://uspto.report/TM/88345967/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 008 for Hand held mechanical food processors, non-electric can openers, kitchen utensils, namely, knives
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 1948336 filed 02/26/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Hand held mechanical food processors, non-electric can openers, kitchen utensils, namely, knives; Hand-operated food processors, non-electric can openers, kitchen utensils, namely, household knives, kitchen knives, serving knives, table knives, vegetable knives, butcher knives, chef knives, and utility knives; French fry cutters; hand-operated choppers; spreaders in the nature of small knives for butter or cheeseClass 008 for Hand-operated food processors, non-electric can openers, kitchen utensils, namely, household knives, kitchen knives, serving knives, table knives, vegetable knives, butcher knives, chef knives, and utility knives; French fry cutters; hand-operated choppers; spreaders in the nature of small knives for butter or cheese
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 1948336 filed 02/26/2019]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Small electric kitchen appliances
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 1948336 filed 02/26/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Small electric kitchen appliances; Small electric kitchen appliances, namely, electric pots, electric skillets, electric griddles, and electric sandwich presses; electric broilers being cookware; electric roastersClass 011 for Small electric kitchen appliances, namely, electric pots, electric skillets, electric griddles, and electric sandwich presses; electric broilers being cookware; electric roasters
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 1948336 filed 02/26/2019]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Cookware, namely, pots, pans, fry pans, saucepans, broilers, roasters, dutch ovens, skillets and bakeware, namely, cake, pie and bread moulds. Kitchen wares, namely, garlic pressers, corkscrews, salt and pepper grinders, jar openers, cheese and vegetable graters, spice racks and bottle caps to replace corks, namely, a pump and stopper set to replace vacuum corks, French fry cutters, non electric food choppers, cheese pressers, cutting boards, cooking plates, cooking plaques, food preserver, namely, containers for storing food, non-electric juicers, kitchen utensils, namely, spoons, spatulas, strainers, spreaders
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 1948336 filed 02/26/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cookware, namely, pots, pans, fry pans, saucepans, broilers, roasters, dutch ovens, skillets and bakeware, namely, cake, pie and bread moulds. Kitchen wares, namely, garlic pressers, corkscrews, salt and pepper grinders, jar openers, cheese and vegetable graters, spice racks and bottle caps to replace corks, namely, a pump and stopper set to replace vacuum corks, French fry cutters, non electric food choppers, cheese pressers, cutting boards, cooking plates, cooking plaques, food preserver, namely, containers for storing food, non-electric juicers, kitchen utensils, namely, spoons, spatulas, strainers, spreaders; Cookware, namely, pots, pans, fry pans, saucepans, dutch ovens, skillets and bakeware, namely, cake, pie and bread moulds; Kitchen wares, namely, garlic pressers, corkscrews, salt and pepper grinders, jar openers, cheese and vegetable graters, spice racks and bottle caps to replace corks, namely, vacuum bottle stoppers, cheese pressers, cutting boards, oven-safe cooking plates, oven-safe cooking plaques, food preserver, namely, household storage containers for storing food, non-electric juicers, kitchen utensils, namely, serving spoons, cooking spoons, mixing spoons, and slotted spoons, spatulas for kitchen use, strainersClass 021 for Cookware, namely, pots, pans, fry pans, saucepans, dutch ovens, skillets and bakeware, namely, cake, pie and bread moulds; Kitchen wares, namely, garlic pressers, corkscrews, salt and pepper grinders, jar openers, cheese and vegetable graters, spice racks and bottle caps to replace corks, namely, vacuum bottle stoppers, cheese pressers, cutting boards, oven-safe cooking plates, oven-safe cooking plaques, food preserver, namely, household storage containers for storing food, non-electric juicers, kitchen utensils, namely, serving spoons, cooking spoons, mixing spoons, and slotted spoons, spatulas for kitchen use, strainers
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 1948336 filed 02/26/2019]. 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 hereby appoints Jennifer J. Theis. Other appointed attorneys are Jerome Gilson, Jeffery A. Handelman, David S. Fleming, Howard S. Michael, Andrew J. Avsec, Virginia W. Marino, Emily Kappers, Michael N. Spink, and Alejandro J. Fernandez. Jennifer J. Theis of Brinks Gilson & Lione, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. Box 10395
      Chicago, Illinois 60610
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 16136-7.

The phone number is 3123214200.

The email address is officeactions@brinksgilson.com

Jennifer J. Theis 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: . , is located at

      
      ,

The applicants proposed correspondence information: Jennifer J. Theis. Jennifer J. Theis of Brinks Gilson & Lione, is located at

      P.O. Box 10395
      Chicago, Illinois 60610
      United States
The docket/reference number is 16136-7.

The phone number is 3123214200.

The email address is officeactions@brinksgilson.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner requires Applicant to explain the significance of the wording in the applied-for mark. Applicant responds that the wording in the mark "ROCK ZERO," "ROCK" or "ZERO" does not have any significance in the trade or industry or as applied to Applicant's goods. Neither are the words "ROCK ZERO," "ROCK" or "ZERO" terms of art within Applicant's industry.


SIGNATURE(S)
Response Signature
Signature: /Jennifer J. Theis/     Date: 12/01/2019
Signatory's Name: Jennifer J. Theis
Signatory's Position: Attorney of record, Illinois Bar member

Signatory's Phone Number: 3123214200

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:    
   
   
   
   ,
Mailing Address:    Jennifer J. Theis
   Brinks Gilson & Lione
   P.O. Box 10395
   Chicago, Illinois 60610
        
Serial Number: 88345967
Internet Transmission Date: Sun Dec 01 22:14:22 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912012214228
93584-88345967-700df67ece98a50c53f3ec2f0
6453c1c905325f25c91beb8a281d6cd6a32c7f3a
b-N/A-N/A-20191201220453658134