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. 88424251 SUN OILS (Stylized and/or with Design, see http://uspto.report/TM/88424251/mark.png) has been amended as follows:

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

This amendment responds to the July 30, 2019 non-final Office Action, in which the Office raises requirements about the identifications of goods and the description of the mark. In the Action, the Office indicates that a search of its trademarks database did not identify any conflicting mark which provides a basis to refuse registration of the applied-for mark.

 

In reply to the Action, the identifications of goods are being amended in a manner consistent with the Office’s proposals of more definite descriptions. Also, the description of the mark is being amended in a manner consistent with the Office’s proposal in Action.

 

This amendment places the application in condition for acceptance for publication. An early action to this effect is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Key chains, clocks; and related goods
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: Key chains, clocks; Keychains, clocks, and watches; and related goodsClass 014 for Keychains, clocks, and watches
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 028 for Miniature toy cars, trucks, and vehicles; and related goods
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: Miniature toy cars, trucks, and vehicles; Miniature toy cars, toy trucks, and toy vehicles; and related goodsClass 028 for Miniature toy cars, toy trucks, and toy vehicles
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: Philip J. Foret. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5774.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed attorney information: Philip J. Foret. Other appointed attorneys are David P. Fitzgibbon. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, 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

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 184753-5774.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

Philip J. Foret 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: PHILIP J. FORET. PHILIP J. FORET of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5774.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed correspondence information: Philip J. Foret. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 184753-5774.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a yellow diamond outlined in red, containing the words "SUN OILS" in red stylized format.

SIGNATURE(S)
Response Signature
Signature: /Philip J. Foret/     Date: 09/12/2019
Signatory's Name: Philip J. Foret
Signatory's Position: Attorney for Applicant, U.S.P.T.O. Registration No. 51689

Signatory's Phone Number: 610-640-5800

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:    PHILIP J. FORET
   STRADLEY RONON STEVENS & YOUNG, LLP
   
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
Mailing Address:    Philip J. Foret
   STRADLEY RONON STEVENS & YOUNG, LLP
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
        
Serial Number: 88424251
Internet Transmission Date: Thu Sep 12 12:51:07 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019091212510783
3257-88424251-6103b26d8c080c98717210bfbf
7718f9122cae92fd2711160deea306c95cd51c8-
N/A-N/A-20190912123129522790