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. 88383023 SIGNIA(Standard Characters, see http://uspto.report/TM/88383023/mark.png) has been amended as follows:

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

Remarks

The following remarks are responsive to the July 12, 2019 Office Action. The Examining Attorney’s comments have been reviewed and carefully considered. In view of the following remarks, Applicant respectfully requests passage of the applied-for mark to publication.

Applicant acknowledges that the Examiner has searched the Office’s database of registered and pending marks and has found no conflicting mark that would bar registration of the applied-for mark.

Registration of the applied-for mark has been refused, however, since the descriptions of goods are allegedly indefinite. In response to this objection, Applicant has amended the descriptions of goods in Classes 16 and 20 to align with the descriptions of goods in U.S. Trademark Serial No. 87/464,516 (GOOD TO GO and Design), according to the Examining Attorney’s suggestion, to read as follows:

Class 16: “Containers and packings of paper, cardboard, and carton for sale to manufacturers of consumable goods; packaging material in the form of composite materials of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates of paper, cardboard, and carton for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods”

Class 20: “Closures and opening elements for packings for foodstuffs and beverages not of metal and paper; closures and opening elements for containers and packings of paper, cardboard, and carton, not of metal and paper, for sale to manufacturers of consumable goods; packaging material in the form of composite materials of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates plastic for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods”

Therefore, in view of these amended description of goods, Applicant respectfully submits that the descriptions of goods are now sufficiently definite. Withdrawal of this objection is respectfully requested.

Conclusion

In view of the foregoing amendments and remarks, Applicant respectfully requests reconsideration of the objection and passage of the applied-for mark to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Containers and packings of paper, cardboard or carton; packaging material in the form of composite materials of including at least one of paper, cardboard, carton and plastic; laminates of at least one of paper, cardboard, carton and plastic for the manufacture of packings, containers and boxes; packaging material of at least one of paper, cardboard, carton and plastic
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.

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[ European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Containers and packings of paper, cardboard or carton; Containers and packings of paper, cardboard, and carton for sale to manufacturers of consumable goods; packaging material in the form of composite materials of including at least one of paper, cardboard, carton and plastic; packaging material in the form of composite materials of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates of at least one of paper, cardboard, carton and plastic for the manufacture of packings, containers and boxes; laminates of paper, cardboard, and carton for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of at least one of paper, cardboard, carton and plastic; packaging material of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goodsClass 016 for Containers and packings of paper, cardboard, and carton for sale to manufacturers of consumable goods; packaging material in the form of composite materials of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates of paper, cardboard, and carton for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of paper, cardboard, and carton being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods
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.

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 [ European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Closures and opening elements for packings for foodstuffs and beverages; closures and opening elements for containers and packings of paper, cardboard or carton
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.

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[ European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Closures and opening elements for packings for foodstuffs and beverages; Closures and opening elements for packings for foodstuffs and beverages not of metal and paper; closures and opening elements for containers and packings of paper, cardboard or carton; closures and opening elements for containers and packings of paper, cardboard, and carton, not of metal and paper, for sale to manufacturers of consumable goods; packaging material in the form of composite materials of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates plastic for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goodsClass 020 for Closures and opening elements for packings for foodstuffs and beverages not of metal and paper; closures and opening elements for containers and packings of paper, cardboard, and carton, not of metal and paper, for sale to manufacturers of consumable goods; packaging material in the form of composite materials of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods; laminates plastic for the manufacture of packings being bins, trays, containers and boxes for sale to manufacturers of consumable goods; packaging material of plastic being packaging containers, boxes, bins, trays for sale to manufacturers of consumable goods
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.

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 [ European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 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.

SIGNATURE(S)
Response Signature
Signature: /cps/     Date: 12/18/2019
Signatory's Name: Christopher P. Sherwin
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 412-471-8815

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.

        
Serial Number: 88383023
Internet Transmission Date: Wed Dec 18 07:48:46 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912180748469
45420-88383023-7004350dd5325d7c6913913b8
96e0f771ab60ba3adf3b7e438ac34e96cbd90c61
b-N/A-N/A-20191218074225487058