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. 88387518 COCONUT HUSK(Standard Characters, see http://uspto.report/TM/88387518/mark.png) has been amended as follows:

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

Applicant has applied to register COCONUT HUSK as a trademark for decking boards. The Office Action dated 7/2/2019 refused registration saying "the applied-for mark merely describes an ingredient of applicant's goods" and requires applicant to submit additional information about applicant's goods. In support of the merely descriptive refusal the Trademark Examining Attorney attached to the office action web pages that describe a method for producing building board from fibrous coconut husks without the use of chemical adhesives. One reference explains that "Coconut husk has the highest lignin content of any known plant and this helps the raw material to bind into a hardboard without the addition of any damaging glue or binder." In response to the request for product information applicant submits excerpts from its website and a Home Depot website which advertises applicant's COCONUT HUSK product. As described in these attachments applicant's product is a decking board that has a "High performance composite core with a synthetic, 3-sided cap for protection from the elements". The product does not contain coconut husks. The core of the decking boards is a proprietary blend of a plastic and wood fiber that provides strength and durability. 3-sided capping makes the product extremely resistant to moisture damage, and its protective surface resists everyday stains and scratches. These products are sold primarily to building contractors who build commercial and residential decks and are sold through distributors who operate builders supply stores and home centers. It is possible that home owners who have the tools and skills required to build a residential deck that meets applicable building codes may purchase these products. Applicant has amended the identification of the goods to recite the type of decking boards on which applicant's mark is used, namely decking boards having a composite core of a plastic and wood fiber and capped on 3 sides with a synthetic material. Applicant submits that COCONUT HUSK s not descriptive of decking boards having a composite core of a plastic and wood fiber and capped on 3 sides with a synthetic material. Therefore, withdrawal of the merely descriptive refusal is respectfully requested. COCONUT HUSK is not misdescriptive of applicant's product because the average purchaser of composite decking boards is not likely to believe that applicant's COCONUT HUSK decking boards contain coconut husks. By definition composite decking boards are made up of wood and plastic. The wood particles can be anything from sawdust, wood chips, and wood fiber pieces. The plastic components can be either virgin or recycled plastic materials. See for example http://www.fiberondecking.com/blog/how-its-made-composite-decking/. Because coconut husks are not wood the average purchaser is not likely to believe that applicant's goods contain coconut husks. Furthermore, purchasers who are familiar with building boards containing coconut husks would know that coconut husks would not be used in a composite containing plastic. According to the evidence presented with the office action a major function of the coconut husks in a building boarded is to bind the material together "without the addition of any damaging glue or binder." But in a plastic wood composite the plastic binds the wood particles together. Reconsideration and passage to publication are respectfully requested

EVIDENCE
Evidence in the nature of Excerpts from websites advertising Applicant's COCONUT HUSK product has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Building materials, namely, decking boards
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: Building materials, namely, decking boards; Building materials, namely, decking boards having a composite core of a plastic and wood fiber and capped on 3 sides with a synthetic materialClass 019 for Building materials, namely, decking boards having a composite core of a plastic and wood fiber and capped on 3 sides with a synthetic material
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.

SIGNATURE(S)
Response Signature
Signature: /Lynn J. Alstadt/     Date: 12/31/2019
Signatory's Name: Lynn J. Alstadt
Signatory's Position: Attorney of record, Pennsylvania bar member

Signatory's Phone Number: 412-562-1632

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: 88387518
Internet Transmission Date: Tue Dec 31 17:01:31 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019123117013134
4123-88387518-700a0e989f614e1a2cadfdb7d8
8f31ef95ea761dd68cfbee45091ad26395a442a-
N/A-N/A-20191231164256436957