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. 88398699 PURE CYCLING(Standard Characters, see http://uspto.report/TM/88398699/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 001 for Recycled chemicals used in industry; Polyol for use in industry and science
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: Recycled chemicals used in industry; Recycled high purity chemicals used in industry; Polyol for use in industry and science; high purity polyol for use in industry and scienceClass 001 for Recycled high purity chemicals used in industry; high purity polyol for use in industry and science
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Recycling and waste treatment
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: Recycling and waste treatment; Recycling and waste treatment resulting in high purity productsClass 040 for Recycling and waste treatment resulting in high purity products
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.

The applicant's current attorney information: Sarah M. Robertson. Sarah M. Robertson of DORSEY & WHITNEY LLP, is located at

      51 WEST 52ND STREET
      NEW YORK, New York 10019-6119
      US
The docket/reference number is 475405-00412.

The phone number is 212-415-9200.

The fax number is 212.953.7201.

The email address is ny.trademark@dorsey.com

The applicants proposed attorney information: Sarah M. Robertson. Other appointed attorneys are Sandra Edelman, Bruce R. Ewing, Fara S. Sunderji and Adam Sapper. Sarah M. Robertson of DORSEY & WHITNEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      51 WEST 52ND STREET
      NEW YORK, New York 10019-6119
      United States
The docket/reference number is 475405-00412.

The phone number is 212-415-9200.

The fax number is 212.953.7201.

The email address is ny.trademark@dorsey.com

Sarah M. Robertson 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: SARAH M. ROBERTSON. SARAH M. ROBERTSON of DORSEY & WHITNEY LLP, is located at

      51 WEST 52ND STREET
      NEW YORK, New York 10019-6119
      US
The docket/reference number is 475405-00412.

The phone number is 212-415-9200.

The fax number is 212.953.7201.

The email address is ny.trademark@dorsey.com; robertson.sarah@dorsey.com; sapper.adam@dorsey.com

The applicants proposed correspondence information: Sarah M. Robertson. Sarah M. Robertson of DORSEY & WHITNEY LLP, is located at

      51 WEST 52ND STREET
      NEW YORK, New York 10019-6119
      United States
The docket/reference number is 475405-00412.

The phone number is 212-415-9200.

The fax number is 212.953.7201.

The email address is ny.trademark@dorsey.com; robertson.sarah@dorsey.com; sapper.adam@dorsey.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use PURE apart from the mark as shown.


Miscellaneous Statement
The Examining Attorney has issued an advisory notice that pending Serial Nos. 87770829 and 87826157 precede Applicant's filing date, and, if allowed to register, may serve as a basis for refusing Applicant's mark. Applicant hereby requests suspension of the present Application pending final disposition of the above-referenced applications. Applicant reserves its right to present arguments in support of registration at a later time if the cited applications mature to registration and a subsequent refusal under Section 2(d) issues in relation to any such registrations.


SIGNATURE(S)
Response Signature
Signature: /smr/     Date: 08/30/2019
Signatory's Name: Sarah M. Robertson
Signatory's Position: Attorney of Record, New York bar member

Signatory's Phone Number: 212.735.0788

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:    SARAH M. ROBERTSON
   DORSEY & WHITNEY LLP
   
   51 WEST 52ND STREET
   NEW YORK, New York 10019-6119
Mailing Address:    Sarah M. Robertson
   DORSEY & WHITNEY LLP
   51 WEST 52ND STREET
   NEW YORK, New York 10019-6119
        
Serial Number: 88398699
Internet Transmission Date: Fri Aug 30 13:48:56 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019083013485660
8355-88398699-6104ee666c83bc05e2195d3e1b
49dc5fcdb2975695b4d198da551eee93052c7ac-
N/A-N/A-20190829194307082529