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. 88352569 DOCK EDGE DE YOUR DOCK YOUR WAY (Stylized and/or with Design, see http://uspto.report/TM/88352569/mark.png) has been amended as follows:

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

This responds to the Office Action dated May 28, 2019 for which a response is due November 29 in view of the Thanksgiving holiday.

 

AMENDMENTS

 

Disclaimer

 

Applicant requests that the following disclaimer be entered into the application:

 

            “No claim is made to the exclusive right to use “DOCK” apart from the mark as shown.”

 

Amendment to Identification of Goods

 

            Applicant requests that the goods of the application be amended to read as follows (amendments shown in bold):

 

Class 6:           Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, ring-shaped fittings of metal rings and ring double-end swivels, shackles for lifting and rigging, reinforcing pins of metal for formwork, rope guides, sheaves being parts of machines, for boats and sailing boats, tracks, screws, bolts and mountings brackets for general use; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal clip for wire; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings; metal stanchions, Stainless steel and galvanized steel marine hardware; anchors; deck fillers in the nature of metal plugs; metal bollards; metal hinges; steel chain; metal shackles for lifting and rigging; metal rigging screws; metal nuts; metal bolts; metal washers; metal marine hardware, namely, thimbles; Hardware, namely, metal brackets for general use; Marine anchors; Metal building materials, namely, soffits; Metal hardware for use in descending ropes, namely, descenders; Metal hardware, namely, washers; chain blocks for lifting and rigging; Metal slings for loading; Ring-shaped fittings of metal; Metals, metal rods, metal compounds and alloys for use in the production of metal by exothermic reaction and in the process of welding metals; Molds of Metal for Exothermic Reaction Welding; Exothermic powdered metal weld mix in the nature of common metal powders used in manufacturing; molds of metal for exothermic reaction welding using molten metal; corrosion-resistant metal and its alloy as overlays and sheets overlays for fittings, steel plates, flanges, piping components; welding apparatus, namely, crucibles of common metal and their alloys; metallic molds for metal casting; hard solder; metal roof flashing, flashing of metal for building; Floating docks of metal, for mooring boats; metal bars; metal beams and metal beams for supporting ships when docking; identity plates of common metal; metal gangways in the nature of metal ramps for use with boats; metal ramps for use with boats

 

Class 17:         Dock bumpers not made of metal in the nature of dock bumpers of rubber, PVC, foam

 

            Please note that Applicant has accepted most of the Examiner’s requested amendments to the goods in Class 6.  However, with respect to “wire rope fittings of metal, namely, trellis fixings,” Applicant believes that these goods are acceptable as filed.  See for example:

 

1.         U.S. Trademark Reg. No. 5488664 for the mark RONSTAN, covering “Metal marine hardware, namely, clamps, hooks, hinges, pipe couplings, locks, clips, hatch locks, screw rings and cup swivel joints of metal, shackles, cotter pins, rope guides of metal to fasten ropes on ships, pulleys, tracks being rails of metal, screws, bolts and metallic mounting brackets; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; metal support straps for holding planted trees in an upward position; metal trellises; plant hangers of metal; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings” in Class 6

 

2.         Allowed Application Serial No. 86202796 for EASY GREEN covering “Architectural metalwork; Braces of metal for handling loads; Building wall framing made primarily of metal; Cable clamps of metal; Cable thimbles of metal; Closures of metal for containers; Collapsible tubes of metal; Commercial waste containers of metal; Construction elements made of metal, namely, braces; Hose hangers of metal; Mechanical fastening elements of metal; Metal cable clips; Metal ceiling panels; Metal clamps; Metal clip for wire; Metal diverting elements for cables, namely, routing elements; Metal fasteners, namely, bolts, screws; Metal hangers for wire/cable; Metal lattices; Metal stanchions; Metal support straps for holding planted trees in an upward position; Metal trellises; Plant hangers of metal; Steel wire rope; Wire mesh; Wire nets and gauzes; Wire rope fittings of metal, namely, trellis fixings” in Class 6.

 

In addition, as Applicant has identified the type of metal for the marine hardware, Applicant believes that the identification is sufficiently definite. 

 

Accordingly, Applicant requests withdrawal of the requests concerning definiteness regarding the marine hardware and “wire rope fittings of metal, namely, trellis fixings.”

 

Conclusion

 

Having answered all of the issues raised in the Examiner’s Office Action, Applicant believes that its application is in condition for publication and respectfully requests such action.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, rings and ring swivels, shackles, pins, rope guides, sheaves, tracks, screws, bolts and mountings; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal clip for wire; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings; metal stanchions, Stainless steel and galvanized marine hardware; anchors; deck fillers; bollards; hinges; chain, shackles; rigging screws; nuts, bolts and washers; metal marine hardware, namely, thimbles; Hardware, namely, metal brackets for general use; Marine anchors; Metal building materials, namely, soffits; Metal hardware for use in descending ropes, namely, descenders; Metal hardware, namely, washers; sailing blocks, thru-hulls, flanged ball-valves and hose clamps, for marine boating applications; Metal slings for loading; Ring-shaped fittings of metal; Metals, metal rods, metal compounds and alloys for use in the production of metal by exothermic reaction and in the process of welding metals; Molds of Metal for Exothermic Reaction Welding, Exothermic powdered metal weld mix, and molds of metal for exothermic reaction welding using molten metal; corrosion-resistant metal and its alloy as overlays and sheets; welding apparatus, namely, crucibles of common metal and their alloys; metallic molds for metal casting; solder, metal roof flashing, flashing of metal for building; Floating docks of metal; metal bars; metal beams; metal beams for supporting ships when docking; plates of common metal; metal gangways; metal ramps
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.

Proposed:
Tracked Text Description: Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, rings and ring swivels, shackles, pins, rope guides, sheaves, tracks, screws, bolts and mountings; Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, ring-shaped fittings of metal rings and ring double-end swivels, shackles for lifting and rigging, reinforcing pins of metal for formwork, rope guides, sheaves being parts of machines, for boats and sailing boats, tracks, screws, bolts and mountings brackets for general use; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal clip for wire; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings; metal stanchions, Stainless steel and galvanized marine hardware; metal stanchions, Stainless steel and galvanized steel marine hardware; anchors; deck fillers; deck fillers in the nature of metal plugs; bollards; metal bollards; hinges; metal hinges; chain, shackles; steel chain; rigging screws; metal shackles for lifting and rigging; nuts, bolts and washers; metal rigging screws; metal nuts; metal bolts; metal washers; metal marine hardware, namely, thimbles; Hardware, namely, metal brackets for general use; Marine anchors; sailing blocks, thru-hulls, flanged ball-valves and hose clamps, for marine boating applications; Metal building materials, namely, soffits; Metal hardware for use in descending ropes, namely, descenders; Metal hardware, namely, washers; chain blocks for lifting and rigging; Molds of Metal for Exothermic Reaction Welding, Exothermic powdered metal weld mix, and molds of metal for exothermic reaction welding using molten metal; Metal slings for loading; corrosion-resistant metal and its alloy as overlays and sheets; Ring-shaped fittings of metal; Metals, metal rods, metal compounds and alloys for use in the production of metal by exothermic reaction and in the process of welding metals; Molds of Metal for Exothermic Reaction Welding; solder, metal roof flashing, flashing of metal for building; Exothermic powdered metal weld mix in the nature of common metal powders used in manufacturing; Floating docks of metal; molds of metal for exothermic reaction welding using molten metal; corrosion-resistant metal and its alloy as overlays and sheets overlays for fittings, steel plates, flanges, piping components; metal beams; welding apparatus, namely, crucibles of common metal and their alloys; metal beams for supporting ships when docking; metallic molds for metal casting; plates of common metal; hard solder; metal roof flashing, flashing of metal for building; metal ramps; Floating docks of metal, for mooring boats; metal bars; metal beams and metal beams for supporting ships when docking; identity plates of common metal; metal gangways; in the nature of metal ramps for use with boats; metal ramps for use with boatsClass 006 for Metal marine hardware-namely, clamps, hooks, hinges, couplings, locks, clips, hatch locks, ring-shaped fittings of metal rings and ring double-end swivels, shackles for lifting and rigging, reinforcing pins of metal for formwork, rope guides, sheaves being parts of machines, for boats and sailing boats, tracks, screws, bolts and mountings brackets for general use; metal ladders for boats; braces of metal for handling loads; building wall framing made primarily of metal; cable clamps of metal; cable thimbles of metal; closures of metal for containers; collapsible tubes of metal; commercial waste containers of metal; construction elements made of metal, namely, braces; hose hangers of metal; mechanical fastening elements of metal; metal cable clips; metal ceiling panels; metal clamps; metal clip for wire; metal fasteners, namely, bolts, screws; metal hangers for cables, wires and chains; metal lattices; metal stanchions; steel wire rope; wire mesh; wire nets and gauzes; wire rope fittings of metal, namely, trellis fixings; metal stanchions, Stainless steel and galvanized steel marine hardware; anchors; deck fillers in the nature of metal plugs; metal bollards; metal hinges; steel chain; metal shackles for lifting and rigging; metal rigging screws; metal nuts; metal bolts; metal washers; metal marine hardware, namely, thimbles; Hardware, namely, metal brackets for general use; Marine anchors; Metal building materials, namely, soffits; Metal hardware for use in descending ropes, namely, descenders; Metal hardware, namely, washers; chain blocks for lifting and rigging; Metal slings for loading; Ring-shaped fittings of metal; Metals, metal rods, metal compounds and alloys for use in the production of metal by exothermic reaction and in the process of welding metals; Molds of Metal for Exothermic Reaction Welding; Exothermic powdered metal weld mix in the nature of common metal powders used in manufacturing; molds of metal for exothermic reaction welding using molten metal; corrosion-resistant metal and its alloy as overlays and sheets overlays for fittings, steel plates, flanges, piping components; welding apparatus, namely, crucibles of common metal and their alloys; metallic molds for metal casting; hard solder; metal roof flashing, flashing of metal for building; Floating docks of metal, for mooring boats; metal bars; metal beams and metal beams for supporting ships when docking; identity plates of common metal; metal gangways; in the nature of metal ramps for use with boats; metal ramps for use with boats
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Dock bumpers not made of metal
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.

Proposed:
Tracked Text Description: Dock bumpers not made of metal; Dock bumpers not made of metal in the nature of dock bumpers of rubber, PVC, foamClass 017 for Dock bumpers not made of metal in the nature of dock bumpers of rubber, PVC, foam
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.

The applicant's current attorney information: Kevin M. Hayes. Kevin M. Hayes of KLARQUIST SPARKMAN, LLP, is located at

      ONE WORLD TRADE CENTER, SUITE 1600
      121 SW SALMON STREET
      PORTLAND, Oregon 97204
      US
The docket/reference number is 859310227901.

The phone number is 503-595-5300.

The fax number is 503-595-5301.

The email address is ptotmdocket@klarquist.com

The applicants proposed attorney information: Kevin M. Hayes. Other appointed attorneys are Patrick M. Bible, Lisa M. Caldwell, J. Christopher Carraway, Kristin L. Cleveland, Robert T. Cruzen, Scott E. Davis, James G. DeRouin, Christopher S. Duncan, Sandon M. Duncan, Ryan A. Farmer, James E. Geringer, Michael P. Girard, Susan W. Graf, Carsten C. Grellmann, Jeffrey B. Haendler, Klaus H. Hamm, Kevin M. Hayes, Joseph T. Jakubek, Alexa M. Johnson, Brandon J. Johnson, Cory A. Jones, Michael D. Jones, Ramon A. Klitzke II, Deakin T. Lauer, Salumeh R. Loesch, Jeffrey S. Love, John M. Lunsford, Andrew M. Mason, Gregory L. Maurer, Ethan A. McGrath, Lauren E. Mitchell, William D. Noonan, David P. Petersen, Kyle B. Rinehart, Wayne R. Rupert, Sheree Lynn Rybak, Johanna P. Schwartz, Gregory K. Scott, Robert F. Scotti, Todd M. Siegel, Stacey C. Slater, Derrick W. Toddy, John D. Vandenberg, Mark W. Wilson, Garth A. Winn, and Travis Young, all members of the Bar of the State of Oregon. Kevin M. Hayes of KLARQUIST SPARKMAN, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE WORLD TRADE CENTER, SUITE 1600
      121 SW SALMON STREET
      PORTLAND, Oregon 97204
      United States
The docket/reference number is 859310227901.

The phone number is 503-595-5300.

The fax number is 503-595-5301.

The email address is ptotmdocket@klarquist.com

Kevin M. Hayes 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: KEVIN M. HAYES. KEVIN M. HAYES of KLARQUIST SPARKMAN, LLP, is located at

      ONE WORLD TRADE CENTER, SUITE 1600
      121 SW SALMON STREET
      PORTLAND, Oregon 97204
      US
The docket/reference number is 859310227901.

The phone number is 503-595-5300.

The fax number is 503-595-5301.

The email address is ptotmdocket@klarquist.com

The applicants proposed correspondence information: Kevin M. Hayes. Kevin M. Hayes of KLARQUIST SPARKMAN, LLP, is located at

      ONE WORLD TRADE CENTER, SUITE 1600
      121 SW SALMON STREET
      PORTLAND, Oregon 97204
      United States
The docket/reference number is 859310227901.

The phone number is 503-595-5300.

The fax number is 503-595-5301.

The email address is ptotmdocket@klarquist.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "DOCK" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /kevin hayes/     Date: 11/27/2019
Signatory's Name: Kevin M. Hayes
Signatory's Position: Attorney of Record, Oregon State Bar member

Signatory's Phone Number: 503-595-5300

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:    KEVIN M. HAYES
   KLARQUIST SPARKMAN, LLP
   ONE WORLD TRADE CENTER, SUITE 1600
   121 SW SALMON STREET
   PORTLAND, Oregon 97204
Mailing Address:    Kevin M. Hayes
   KLARQUIST SPARKMAN, LLP
   ONE WORLD TRADE CENTER, SUITE 1600
   121 SW SALMON STREET
   PORTLAND, Oregon 97204
        
Serial Number: 88352569
Internet Transmission Date: Wed Nov 27 18:22:32 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201911271822324
35460-88352569-700e4939db98364e552f938b8
533f2f77423a316562fad820498c45435780ff-N
/A-N/A-20191127154642060132