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. 88361790 TRACKER(Standard Characters, see http://uspto.report/TM/88361790/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of TESS printouts of third-party registrations and applicant's related registrations has been attached.
Original PDF file:
evi_2042272555-20191023125553935177_._Response_to_Office_Action_-_TRACKER.pdf
Converted PDF file(s) ( 9 pages)
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Original PDF file:
evi_2042272555-20191023125553935177_._Exhibit_A.pdf
Converted PDF file(s) ( 19 pages)
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Original PDF file:
evi_2042272555-20191023125553935177_._Exhibit_B.pdf
Converted PDF file(s) ( 25 pages)
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Original PDF file:
evi_2042272555-20191023125553935177_._Exhibit_C.pdf
Converted PDF file(s) ( 42 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 007 for Replacement parts for vehicles, suspension systems, transmissions, electrical systems

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 004 for Engine oils; lubricants
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: Engine oils; lubricants; automotive lubricants; all-purpose lubricantsClass 004 for Engine oils; automotive lubricants; all-purpose lubricants
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 009 for Protective wear, namely, goggles, helmets
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: Protective wear, namely, goggles, helmets; Protective wear, namely, safety goggles, helmets; electrical systems comprised of electric accumulators and batteries for vehiclesClass 009 for Protective wear, namely, safety goggles, helmets; electrical systems comprised of electric accumulators and batteries for vehicles
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 012 for Vehicles accessories, namely, bed extenders, hood racks, brush guards, gun mounts
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: Vehicles accessories, namely, bed extenders, hood racks, brush guards, gun mounts; Truck bed extenders, hood cargo racks, brush guards being automobile bumper guards, gun mounts being gun racks for vehicles; suspension systems for automobiles; transmissions for land vehicles; electrical systems comprised of electric motors for land vehiclesClass 012 for Truck bed extenders, hood cargo racks, brush guards being automobile bumper guards, gun mounts being gun racks for vehicles; suspension systems for automobiles; transmissions for land vehicles; electrical systems comprised of electric motors for land vehicles
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: Richard L. Kirkpatrick. Richard L. Kirkpatrick of PILLSBURY WINTHROP SHAW PITTMAN LLP, is located at

      CALENDAR/DOCKETING DEPARTMENT
      P.O. BOX 2824
      SAN FRANCISCO, California 94126-2824
      US
The docket/reference number is 85418-504135.

The phone number is 415-983-1802.

The fax number is 415-983-1200.

The email address is sftrademarks@pillsburylaw.com

The applicants proposed attorney information: Richard L. Kirkpatrick. Other appointed attorneys are Laura C. Gustafson, Sam E. Iverson, all members of Pillsbury Winthrop Shaw Pittman LLP, and all other attorneys associated with that firm. Richard L. Kirkpatrick of PILLSBURY WINTHROP SHAW PITTMAN 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

      P.O. Box 2824
      San Francisco, California 94126-2824
      United States
The docket/reference number is 85418-504135.

The phone number is 415-983-1802.

The fax number is 415-983-1200.

The email address is sftrademarks@pillsburylaw.com

Richard L. Kirkpatrick 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: RICHARD L. KIRKPATRICK. RICHARD L. KIRKPATRICK of PILLSBURY WINTHROP SHAW PITTMAN LLP, is located at

      CALENDAR/DOCKETING DEPARTMENT
      P.O. BOX 2824
      SAN FRANCISCO, California 94126-2824
      US
The docket/reference number is 85418-504135.

The phone number is 415-983-1802.

The fax number is 415-983-1200.

The email address is sftrademarks@pillsburylaw.com

The applicants proposed correspondence information: Richard L. Kirkpatrick. Richard L. Kirkpatrick of PILLSBURY WINTHROP SHAW PITTMAN LLP, is located at

      P.O. Box 2824
      San Francisco, California 94126-2824
      United States
The docket/reference number is 85418-504135.

The phone number is 415-983-1802.

The fax number is 415-983-1200.

The email address is sftrademarks@pillsburylaw.com

SIGNATURE(S)
Response Signature
Signature: /Sam E. Iverson/     Date: 10/23/2019
Signatory's Name: Sam E. Iverson
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 415-983-1234

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:    RICHARD L. KIRKPATRICK
   PILLSBURY WINTHROP SHAW PITTMAN LLP
   CALENDAR/DOCKETING DEPARTMENT
   P.O. BOX 2824
   SAN FRANCISCO, California 94126-2824
Mailing Address:    Richard L. Kirkpatrick
   PILLSBURY WINTHROP SHAW PITTMAN LLP
   P.O. Box 2824
   San Francisco, California 94126-2824
        
Serial Number: 88361790
Internet Transmission Date: Wed Oct 23 13:01:46 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019102313014683
3603-88361790-6104f7a5eb0e730e6957fae81e
af62bcdc39b59f478ff22537439e848c19a49916
8-N/A-N/A-20191023125553935177