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)

---

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. 88352129 MW (Stylized and/or with Design, see http://uspto.report/TM/88352129/mark.png) has been amended as follows:

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

This response is submitted in reply to the Office Action issued April 15, 2020. The Office Action refused acceptance of the Class 6 specimen and requested information regarding the specimen.

In response, Applicant submits verified substitute specimens that were in actual use in commerce prior to the expiration of the deadline for filing the Statement of Use and that show the mark in actual use in commerce for the Class 6 goods. The verified substitute specimens include photographs of the mark on the actual Class 6 goods.

With respect to the verified substitute specimen, Applicant submits the following responses to the information request:

1. Explain whether the specimen was created for submission with this application. Specifically, did applicant digitally add the label containing the mark to the photo for purposes of submitting it as a specimen?

The specimens were not created for this application and were and are used in commerce. Applicant did not digitally add any labelling for submission of any specimen for this application.

2. Are the goods depicted being sold in commerce? If so, provide information about and examples of how applicant’s goods appear in the actual sales environment.

a. If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.

b. If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

c. If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.

Examples of how the goods are sold online by third-party retailers, O’Reilly Auto Parts and True Value, are attached as Exhibit A. The goods are sold in brick and mortar stores as well, but we cannot provide photographs in view of the current Covid-19 store closures.

If the Examining Attorney has any comments regarding Applicant’s response or finds that any of the requirements has not been met, Applicant respectfully requests that the Examining Attorney contact the undersigned counsel.

EVIDENCE
Evidence in the nature of Exhibit A to Response to Office Action has been attached.
Original PDF file:
evi_42851130-20200505165206382710_._Exhibit_A.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 006 for Liquid fuel containers, industrial and commercial containers, namely, metal storage drums, chemical oil containers, namely, jerrycans, all made of metal; Liquid fuel containers, industrial and commercial containers, namely, metal storage drums, chemical oil containers, namely, jerrycans, all made of metal and with flame mitigation device help prevent combustion; metal containers for liquid fuel with flame mitigation device help prevent combustion
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 08/00/2018 and first used in commerce at least as early as 08/00/2018 , and is now in use in such commerce.

Proposed: Class 006 for Liquid fuel containers, industrial and commercial containers, namely, metal storage drums, chemical oil containers, namely, jerrycans, all made of metal; Liquid fuel containers, industrial and commercial containers, namely, metal storage drums, chemical oil containers, namely, jerrycans, all made of metal and with flame mitigation device help prevent combustion; metal containers for liquid fuel with flame mitigation device help prevent combustion
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 08/00/2018 and first used in commerce at least as early as 08/00/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 006. The specimen(s) submitted consists of photographs of the mark on the label 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
Specimen File2
Specimen File3
Correspondence Information (current):
      Anna L. King
      PRIMARY EMAIL FOR CORRESPONDENCE: bwptotm@bannerwitcoff.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Aking@bannerwitcoff.com; sward@bannerwitcoff.com

The docket/reference number is 008794.00004.
Correspondence Information (proposed):
      Anna L. King
      PRIMARY EMAIL FOR CORRESPONDENCE: bwptotm@bannerwitcoff.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Aking@bannerwitcoff.com; sward@bannerwitcoff.com

The docket/reference number is 008794.00004.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Anna King/      Date: 05/05/2020
Signatory's Name: Anna King
Signatory's Position: Attorney of Record, Illinois bar member
Signatory's Phone Number: (312) 463-5000


Response Signature
Signature: /Anna King/     Date: 05/05/2020
Signatory's Name: Anna King
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: (312) 463-5000

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:    Anna L. King
   BANNER & WITCOFF, LTD.
   
   71 S. WACKER DRIVE, SUITE 3600
   CHICAGO, Illinois 60606
Mailing Address:    Anna L. King
   BANNER & WITCOFF, LTD.
   71 S. WACKER DRIVE, SUITE 3600
   CHICAGO, Illinois 60606
        
Serial Number: 88352129
Internet Transmission Date: Tue May 05 17:13:21 ET 2020
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-202005051713217225
24-88352129-7107892ccc984b281997e34c9640
6bc0b7e0526a68a76b18c164e154612df28-N/A-
N/A-20200505170928562430