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. 88382947 ALLSTEEL(Standard Characters, see http://uspto.report/TM/88382947/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of the attached Response document and exhibits. has been attached.
Original PDF file:
evi_67173179105-20191220091501886757_._Evidence_for_Response_to_Office_Action.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_7214045252-20191223114033062337_._88382947_-_Response_to_Office_Action__3167.0180000_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for cutting discs, flap discs, wire brushes, abrasive plugs, cones, burrs, drums, belts and mounted points, drill bits, all for use with power tools; grinding discs
Original Filing Basis:
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 01/00/2019 and first used in commerce at least as early as 01/00/2019 , and is now in use in such commerce.

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 1930176 filed 11/13/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: cutting discs, flap discs, wire brushes, abrasive plugs, cones, burrs, drums, belts and mounted points, drill bits, all for use with power tools; cutting discs, flap discs, abrasive plugs, cones, drums, belts and mounted points for use with power tools for cutting, drilling, grinding and finishing; grinding discsClass 007 for cutting discs, flap discs, abrasive plugs, cones, drums, belts and mounted points for use with power tools for cutting, drilling, grinding and finishing; grinding discs
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 01/00/2019 and first used in commerce at least as early as 01/00/2019 , and is now in use in such commerce.
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 1930176 filed 11/13/2018]. 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's current attorney information: Monica Riva Talley. Monica Riva Talley of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVE NW
      WASHINGTON, District of Columbia 20005
      US
The docket/reference number is 3167.0180000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com

The applicants proposed attorney information: Monica Riva Talley. Other appointed attorneys are Tracy-Gene G. Durkin; Lauriel F. Dalier; Dana N. Justus; Shana L. Olson; Ivy Clarice Estoesta. Monica Riva Talley of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1100 NEW YORK AVE NW
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is 3167.0180000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com

Monica Riva Talley 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: MONICA RIVA TALLEY. MONICA RIVA TALLEY of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVE NW
      WASHINGTON, District of Columbia 20005
      US
The docket/reference number is 3167.0180000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com; mtalley@sternekessler.com; ldalier@sternekessler.com; alazea@sternekessler.com

The applicants proposed correspondence information: Monica Riva Talley. Monica Riva Talley of STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., is located at

      1100 NEW YORK AVE NW
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is 3167.0180000.

The phone number is 202-371-2600.

The fax number is 202-371-2540.

The email address is tm@sternekessler.com; mtalley@sternekessler.com; ldalier@sternekessler.com; alazea@sternekessler.com

SIGNATURE(S)
Response Signature
Signature: /Monica Riva Talley/     Date: 12/23/2019
Signatory's Name: Monica Riva Talley
Signatory's Position: Attorney of Record, Member of Virginia and Washington, DC Bars

Signatory's Phone Number: 2023712600

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:    MONICA RIVA TALLEY
   STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
   
   1100 NEW YORK AVE NW
   WASHINGTON, District of Columbia 20005
Mailing Address:    Monica Riva Talley
   STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
   1100 NEW YORK AVE NW
   WASHINGTON, District of Columbia 20005
        
Serial Number: 88382947
Internet Transmission Date: Mon Dec 23 13:07:37 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019122313073724
3806-88382947-700d3dead9471112ab8f4d4761
e1b40af608bd43964d183ac14faeef5f1f127a3c
c-N/A-N/A-20191223114033062337