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. 88381494 SELLEYS(Standard Characters, see http://uspto.report/TM/88381494/mark.png) has been amended as follows:

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

The Examining Attorney has requested a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin.  Respectfully, Applicant notes that in its Application submitted April 11, 2019, it in fact submitted a copy of the Certificate of Registration for SELLEYS (Reg. No. 1735995) issued by the Commonwealth of Australia Trademark Office and not a printout from an intellectual property office’s website.  Accordingly, Applicant's statutory requirement under Trademark Act Section 44(e) has been satisfied.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for chemicals used in industry; glazing putty, spatula putty being glaziers' putty; sealants being chemicals for sealing of surfaces, namely, surface sealants for use in construction, roofing, plumbing, glazing and waterproofing; industrial adhesives for use in filling surface blemishes; filler materials, namely, fillers for maintenance and repair used in construction, roofing, plumbing, glazing and waterproofing; adhesives for industrial purposes, namely, for billposting, and for mending broken articles not for medical, household or stationery use; adhesives for construction use; adhesives for paper hanging, and for wall tiles; chemical preparations, namely, sprays, gels, powders to prevent odours, mould, mildew from growing; mould inhibiting chemicals for preventing growth of mold; products for sealing surfaces, brickwork, concrete, other than paints and oils, namely, chemical sealants; water sealant preparations, namely, chemical grout sealants; acrylic monomers for use as sealants, ethyl urethane floor sealants; grout sealants in the nature of chemical preparations
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1735995 registered 11/19/2015 with a renewal date of 11/19/2025 and an expiration date of 11/19/2025 ], 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: chemicals used in industry; glazing putty, spatula putty being glaziers' putty; sealants being chemicals for sealing of surfaces, namely, surface sealants for use in construction, roofing, plumbing, glazing and waterproofing; industrial adhesives for use in filling surface blemishes; filler materials, namely, fillers for maintenance and repair used in construction, roofing, plumbing, glazing and waterproofing; chemicals used in industry in the nature of fillers for maintenance and repair used in construction, roofing, plumbing, glazing and waterproofing; adhesives for industrial purposes, namely, for billposting, and for mending broken articles not for medical, household or stationery use; adhesives for construction use; adhesives for paper hanging, and for wall tiles; chemical preparations, namely, sprays, gels, powders to prevent odours, mould, mildew from growing; chemical preparations, namely sprays, gels, powders to prevent odours, mould, mildew from growing; mould inhibiting chemicals for preventing growth of mold; products for sealing surfaces, brickwork, concrete, other than paints and oils, namely, chemical sealants; water sealant preparations, namely, chemical grout sealants; acrylic monomers for use as sealants, ethyl urethane floor sealants; grout sealants in the nature of chemical preparationsClass 001 for chemicals used in industry; glazing putty, spatula putty being glaziers' putty; sealants being chemicals for sealing of surfaces, namely, surface sealants for use in construction, roofing, plumbing, glazing and waterproofing; industrial adhesives for use in filling surface blemishes; chemicals used in industry in the nature of fillers for maintenance and repair used in construction, roofing, plumbing, glazing and waterproofing; adhesives for industrial purposes, namely, for billposting, and for mending broken articles not for medical, household or stationery use; adhesives for construction use; adhesives for paper hanging, and for wall tiles; chemical preparations, namely sprays, gels, powders to prevent odours, mould, mildew from growing; mould inhibiting chemicals for preventing growth of mold; products for sealing surfaces, brickwork, concrete, other than paints and oils, namely, chemical sealants; water sealant preparations, namely, chemical grout sealants; acrylic monomers for use as sealants, ethyl urethane floor sealants; grout sealants in the nature of chemical preparations
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1735995 registered 11/19/2015 with a renewal date of 11/19/2025 and an expiration date of 11/19/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

SIGNATURE(S)
Response Signature
Signature: /Deborah J Peckham/     Date: 07/30/2019
Signatory's Name: Deborah J. Peckham
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-345-3000

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: 88381494
Internet Transmission Date: Tue Jul 30 15:54:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190730155440735
303-88381494-620e6be19ae86bc78c83130f657
401eedf4657499e58325f4ae492761961a67b-N/
A-N/A-20190730142548615973