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. 88416985 VIXEN SURFACE TREATEMENTS(Standard Characters, see http://uspto.report/TM/88416985/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 007 for Machine tools; industrial cleaning machines; industrial surfacing machines; high pressure liquid machines; machines utilizing high pressure liquids; machines that produce streams of liquids; wet blasting machines; degreasing machines; vapor blasting machines; slurry blasting machines
Original Filing Basis:
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[ United Kingdom application number 018001023 filed 12/16/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Machine tools; Industrial cleaning machines, namely, cleaning machines for washing and degreasing of components; industrial cleaning machines; high pressure liquid machines, namely, machines for cleaning component surfaces using high pressure water; industrial surfacing machines; machines utilizing high pressure liquids, namely, machines for cleaning component surfaces using high pressure water; high pressure liquid machines; machines that produce streams of liquids for blast cleaning a surface; machines utilizing high pressure liquids; wet blasting machines for blast cleaning a surface; machines that produce streams of liquids; degreasing machines for use on metallic and plastic surfaces; wet blasting machines; vapor blasting machines for blast cleaning a surface; degreasing machines; slurry blasting machines for blast cleaning a surface; vapor blasting machines; slurry blasting machinesClass 007 for Industrial cleaning machines, namely, cleaning machines for washing and degreasing of components; high pressure liquid machines, namely, machines for cleaning component surfaces using high pressure water; machines utilizing high pressure liquids, namely, machines for cleaning component surfaces using high pressure water; machines that produce streams of liquids for blast cleaning a surface; wet blasting machines for blast cleaning a surface; degreasing machines for use on metallic and plastic surfaces; vapor blasting machines for blast cleaning a surface; slurry blasting machines for blast cleaning a surface
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 [ United Kingdom application number 018001023 filed 12/16/2018]. 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 [ United Kingdom registration number EU018001023 registered 05/14/2019 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:
FRU0-98245219133-203723121_._EU_VIXEN_SURFACE_018001023.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Original PDF file:
FRU0-98245219133-203723121_._Application_for_UK_Certified_VIXEN_SURFACE.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

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: David L. Rein Jr.. David L. Rein Jr. of ERICKSON KERNELL IP, LLC, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      US
The docket/reference number is 5177.002.

The phone number is 913-549-4700.

The fax number is 913-549-4646.

The email address is ekdkdocket@kcpatentlaw.com

The applicants proposed attorney information: David L. Rein Jr.. David L. Rein Jr. of ERICKSON KERNELL IP, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      United States
The docket/reference number is 5177.002.

The phone number is 913-549-4700.

The fax number is 913-549-4646.

The email address is ekdkdocket@kcpatentlaw.com

David L. Rein Jr. 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: DAVID L. REIN JR.. DAVID L. REIN JR. of ERICKSON KERNELL IP, LLC, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      US
The docket/reference number is 5177.002.

The phone number is 913-549-4700.

The fax number is 913-549-4646.

The email address is ekdkdocket@kcpatentlaw.com

The applicants proposed correspondence information: David L. Rein Jr.. David L. Rein Jr. of ERICKSON KERNELL IP, LLC, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      United States
The docket/reference number is 5177.002.

The phone number is 913-549-4700.

The fax number is 913-549-4646.

The email address is ekdkdocket@kcpatentlaw.com; drein@kcpatentlaw.com

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


Miscellaneous Statement
As for the Identification of Goods, Applicant revised the description of goods in the form that the Examiner suggested. If additional clarification is necessary, please let the undersigned know. As for the Foreign Registration Certificate, Applicant provides a certified copy of the registration from the European Union. In the event that the Examiner wants a certified copy of the registration from the UK, Applicant provides proof that it has paid for and requested a certified copy from the UK as well. Applicant expects to receive the certified copy from the UK in approximately thirty days and will provide it to the Examiner at that time, if requested.


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: /David L. Rein Jr./      Date: 01/21/2020
Signatory's Name: David L. Rein Jr.
Signatory's Position: Attorney of Record
Signatory's Phone Number: 816-585-2151


Response Signature
Signature: /David L. Rein Jr./     Date: 01/21/2020
Signatory's Name: David L. Rein Jr.
Signatory's Position: Attorney of Record

Signatory's Phone Number: 816-585-2151

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:    DAVID L. REIN JR.
   ERICKSON KERNELL IP, LLC
   
   8900 STATE LINE ROAD, SUITE 500
   LEAWOOD, Kansas 66206
Mailing Address:    David L. Rein Jr.
   ERICKSON KERNELL IP, LLC
   8900 STATE LINE ROAD, SUITE 500
   LEAWOOD, Kansas 66206
        
Serial Number: 88416985
Internet Transmission Date: Tue Jan 21 20:50:54 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001212050541
28733-88416985-7009e5462601315cb14bd4b5d
628a2ad89c1d9b592bcbeb51aea43375bc08d3b-
N/A-N/A-20200121203723121624