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. 88392415 HFX(Standard Characters, see http://uspto.report/TM/88392415/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Building and construction materials and elements of metal; Transportable buildings of metal, construction elements of metal, namely, industrially manufactured profile panels, roofing boards, shingles, rhomboid roofing tiles, roofing and facade elements and flashings; Metallic locksmith 's products and small items of metal hardware; Pipes and tubes of metal; Sheet metal, sheets of steel; Goods of sheet metal and coils, namely, roof and rain gutters and parts therefor, downspouts and parts therefor, aeration and ventilation pipes, air conducting and air routing ducts for air conditioning and ventilation systems; Metal facades; Metal roofing; Building drainage profiles of metal; Metals in coil and flat form; Steel; Steel alloys; Stainless steel; Small items of metal hardware and construction elements for use on roofs or facades or as building drainage, not included in other classes; Slabs of metal for construction purposes; Metal flashings; Flashings and trim of metal for construction purposes; Parts and accessories for all the aforesaid goods, included in this class
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 017985575 filed 11/14/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Building and construction materials and elements of metal; Building and construction materials and elements of metal, namely, Soffits, fascia; Transportable buildings of metal, construction elements of metal, namely, industrially manufactured profile panels, roofing boards, shingles, rhomboid roofing tiles, roofing and facade elements and flashings; Transportable buildings of metal; Metallic locksmith 's products and small items of metal hardware; construction elements of metal, namely, industrially manufactured roofing and façade profile panels, roofing boards, shingles, rhomboid roofing and façade tiles; construction elements of metal being roofing and facade elements and flashings, namely, wall panels, exterior panels, flashings for roof and façade; Pipes and tubes of metal; Goods of sheet metal and coils, namely, roof and rain gutters and parts therefor, downspouts and parts therefor, aeration and ventilation pipes, air conducting and air routing ducts for air conditioning and ventilation systems; Sheet metal, sheets of steel; Metal facades; Goods of sheet metal and sheet metal coils, namely, roof and rain gutters and parts therefor, namely end caps, hooks, fascia brackets, box miters, outlets, leader heads, downspouts and parts therefor namely elbows, hooks, rainwater flaps, aeration and ventilation pipes, air conducting and air routing ducts for air conditioning and ventilation systems; Metal facades panels for construction purposes; Building drainage profiles of metal; Metal roofing; Metals in coil and flat form; Steel; Steel alloys; Stainless steel; Small items of metal hardware and construction elements for use on roofs or facades or as building drainage, not included in other classes; Small items of metal hardware and construction elements for use on roofs or facades or as building drainage, not included in other classes, namely, shingles, profiles, flashings; Slabs of metal for construction purposes; Metal flashings; Metal flashings for building; Flashings and trim of metal for construction purposes; Parts and accessories for all the aforesaid goods, included in this class; Replacement Parts for all the aforesaid goodsClass 006 for Building and construction materials and elements of metal, namely, Soffits, fascia; Transportable buildings of metal; construction elements of metal, namely, industrially manufactured roofing and façade profile panels, roofing boards, shingles, rhomboid roofing and façade tiles; construction elements of metal being roofing and facade elements and flashings, namely, wall panels, exterior panels, flashings for roof and façade; Pipes and tubes of metal; Sheet metal, sheets of steel; Goods of sheet metal and sheet metal coils, namely, roof and rain gutters and parts therefor, namely end caps, hooks, fascia brackets, box miters, outlets, leader heads, downspouts and parts therefor namely elbows, hooks, rainwater flaps, aeration and ventilation pipes, air conducting and air routing ducts for air conditioning and ventilation systems; Metal facades panels for construction purposes; Metal roofing; Metals in coil and flat form; Steel; Steel alloys; Stainless steel; Small items of metal hardware and construction elements for use on roofs or facades or as building drainage, not included in other classes, namely, shingles, profiles, flashings; Slabs of metal for construction purposes; Metal flashings for building; Flashings and trim of metal for construction purposes; Replacement Parts for all the aforesaid 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 017985575 filed 11/14/2018]. 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:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017985575 registered 05/15/2019 with a renewal date of __________ and an expiration date of __________ ], 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.
Original PDF file:
FRU0-108412770-101006835_._EUIPO_Registrierungsurkunde_190515.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Roberto Ledesma. Roberto Ledesma of LAW OFFICE OF ROBERTO LEDESMA, is located at

      PO BOX 230692
      NEW YORK, New York 10023
      US

The phone number is 646-845-9414.

The email address is RL@EverythingTrademarks.com

The applicants proposed attorney information: Roberto Ledesma. Roberto Ledesma of LAW OFFICE OF ROBERTO LEDESMA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 230692
      NEW YORK, New York 10023
      United States

The phone number is 646-845-9414.

The email address is RL@EverythingTrademarks.com

Roberto Ledesma 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: ROBERTO LEDESMA. ROBERTO LEDESMA of LAW OFFICE OF ROBERTO LEDESMA, is located at

      PO BOX 230692
      NEW YORK, New York 10023
      US

The phone number is 646-845-9414.

The email address is RL@EverythingTrademarks.com; office@EverythingTrademarks.com

The applicants proposed correspondence information: Roberto Ledesma. Roberto Ledesma of LAW OFFICE OF ROBERTO LEDESMA, is located at

      PO BOX 230692
      NEW YORK, New York 10023
      United States

The phone number is 646-845-9414.

The email address is RL@EverythingTrademarks.com; office@EverythingTrademarks.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
HFX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


Miscellaneous Statement
requested information

Original PDF file:
mis-108412770-20191021101006835574_._inless_for_roof__wall_cladding_and_gutter_-_the_best_choice_.pdf
Converted PDF file(s) ( 13 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10
Miscellaneous File11
Miscellaneous File12
Miscellaneous File13

SIGNATURE(S)
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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU 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 filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; 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: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, 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; 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 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.

Signature: /Roberto Ledesma/      Date: 10/21/2019
Signatory's Name: Roberto Ledesma
Signatory's Position: Attorney for Applicant, NY state bar member

Response Signature
Signature: /Roberto Ledesma/     Date: 10/21/2019
Signatory's Name: Roberto Ledesma
Signatory's Position: Attorney for Applicant, NY state bar member

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:    ROBERTO LEDESMA
   LAW OFFICE OF ROBERTO LEDESMA
   
   PO BOX 230692
   NEW YORK, New York 10023
Mailing Address:    Roberto Ledesma
   LAW OFFICE OF ROBERTO LEDESMA
   PO BOX 230692
   NEW YORK, New York 10023
        
Serial Number: 88392415
Internet Transmission Date: Mon Oct 21 10:17:18 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20191021101718101
197-88392415-610cd27b653aa78795486bb5c82
7d473a9a119af6f9c327414675675ce138ceb50-
N/A-N/A-20191021101006835574