TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

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:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Switzerland registration number 735821 registered 09/12/2019, with a renewal date of __________ and an expiration date of 04/03/2029, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_38107150106-083929839_._Swiss_Reg._Cert._No._735821_for_SIGNIA.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FR_38107150106-083929839_._English-language_Translation_of_Swiss_Reg._No._735821.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FR_38107150106-083929839_.__English-language_Translation_of_Swiss_Reg._Cert._No._735821.PDF
Converted PDF file(s) (1 page)
Foreign Registration-1
Comment(s)/Remark(s):

Remarks

The following remarks are responsive to the Suspension Notice dated December 18, 2019. 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.

The Examining Attorney has noted that the present application has been suspended until submission of the corresponding foreign registration upon which Applicant relies on for establishing use of the applied-for mark. Applicant hereby submits a copy of foreign Swiss Registration No. 735821 and its corresponding certified English-language translation.  To the extent the Examining Attorney agrees that the corresponding Swiss registration adequately covers the goods identified in the present application, Applicant respectfully requests deletion of the Section 1(b) filing basis. To the extent the Examining Attorney believes any goods in the present application are not covered by the corresponding Swiss registration, Applicant respectfully requests that the Section 1(b) filing basis be maintained for these goods. Applicant further requests that the priority 44(d) filing basis based on the European trademark application be maintained in the present application.

Conclusion

In view of the foregoing remarks, Applicant respectfully requests acceptance of the corresponding Swiss registration and passage of the applied-for mark to publication. To the extent the Examining Attorney has any questions or comments regarding this response, the Examining Attorney is encouraged to contact Applicant’s undersigned representative to expedite the prosecution of this application.

 

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, 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Switzerland registration number 735821 registered 09/12/2019 with a renewal date of __________ and an expiration date of 04/03/2029 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-38107150106-083929839_._Swiss_Reg._Cert._No._735821_for_SIGNIA.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-38107150106-083929839_._English-language_Translation_of_Swiss_Reg._No._735821.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-38107150106-083929839_.__English-language_Translation_of_Swiss_Reg._Cert._No._735821.PDF
Converted PDF file(s) (1 page)
Foreign Registration-1

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 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017968268 filed 10/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Switzerland registration number 735821 registered 09/12/2019 with a renewal date of __________ and an expiration date of 04/03/2029 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-38107150106-083929839_._Swiss_Reg._Cert._No._735821_for_SIGNIA.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU1-38107150106-083929839_._English-language_Translation_of_Swiss_Reg._No._735821.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU1-38107150106-083929839_.__English-language_Translation_of_Swiss_Reg._Cert._No._735821.PDF
Converted PDF file(s) (1 page)
Foreign Registration-1


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SIG Technology AG a(n) aktiengesellschaft, legally organized under the laws of Switzerland, having an address of
      Laufengasse 18
      Neuhausen am Rheinfall, 8212
      Switzerland
Proposed: SIG Technology AG, aktiengesellschaft legally organized under the laws of Switzerland, having an address of
      Laufengasse 18
      Neuhausen am Rheinfall, 8212
      Switzerland
      Email Address: XXXX
Correspondence Information (current):
      John W. McIlvaine
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@webblaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 3988-1901801.
Correspondence Information (proposed):
      John W. McIlvaine
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@webblaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 3988-1901801.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: for a trademark or service mark application, the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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 of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /cps/    Date: 05/14/2020
Signatory's Name: Christopher P. Sherwin
Signatory's Position: Attorney of Record, PA Bar member
Signatory's Phone Number: 412-471-8815

Response Suspension Inquiry Signature
Signature: /cps/     Date: 05/14/2020
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.

Mailing Address:    John W. McIlvaine
   The Webb Law Firm
   One Gateway Center
   420 Fort Duquesne Boulevard, Suite 1200
   Pittsburgh, Pennsylvania
Mailing Address:    John W. McIlvaine
   The Webb Law Firm
   One Gateway Center
   420 Fort Duquesne Boulevard, Suite 1200
   Pittsburgh, Pennsylvania 15222
        
Serial Number: 88383023
Internet Transmission Date: Thu May 14 14:02:54 ET 2020
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XXX-202005141402541
10833-88383023-710e073ceabfa85f3315fa346
83aebd26e2fe5d7d5e3dd5da866c7cc961aa3205
8-N/A-N/A-20200514140016707545