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. 88441265 O (Stylized and/or with Design, see http://uspto.report/TM/88441265/mark.png) has been amended as follows:

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

In response to the August 9, 2019 Office Action, please amend the description of goods to read as follows:

International Class 1

 

"Chemicals for industrial purposes; plant growth regulating preparations; fertilizers; chemical test paper; flour and starch for industrial purposes; unprocessed plastics in the nature of plastics in primary form; cellulous pulp; chemiground wood pulp; chemimechanical pulp; deinked pulp; dissolving wood pulp for manufacturing purposes; groundwood pulp; paper pulp; paper pulp for manufacturing purposes; sulphite pulp; thermomechanical pulp; wood pulp for manufacturing purposes; flocculants; cellulose."

International Class 17

 

"Electrical insulating materials; chemical fiber thread and yarn, not for textile use; plastic sheeting for agricultural purposes; condenser papers for electrical capacitors; vulcanized fiber; semi-processed plastics; plastic film for packing, cushioning, or stuffing purposes for commercial or industrial use, other than for wrapping; synthetic rubber; adhesive tapes for industrial and commercial use, other than for stationery, medical and household purposes."

International Class 19

"Non-metallic building materials, namely, waterproofing membranes for roofing, floors and walls in the nature of substructural waterproofing for tunnels, underpasses, and basements; building timber; construction materials, namely, non-metal flooring materials; non-metal roofing; non-metallic minerals for building or construction; veneer wood; wood paneling; construction materials in the nature of nonmetal composite panel boards of wood pulp for building; shuttering, not of metal, for casting concrete."

International Class 31

"Fresh fruits; fresh vegetables; foodstuffs for animals; seeds and bulbs for planting; live trees; live plants, namely, grasses; turf, natural; seedlings; saplings; natural flowers; live plants, namely, pasture grass; wood chips for the manufacture of wood pulp."

Applicant, by the foregoing amendment, has more specifically identified its goods in accordance with the Examining Attorney's requirements.  As amended, it is submitted that the goods are now properly identified and classified.

With respect to the Examining Attorney's requirement that Applicant provide bar information and attestation of counsel's bar membership, please insert the following statement:

"I attest that I am an attorney who is an active member in good standing of the bar of the District of Columbia.  The D.C. Bar number is 184093 and the year of admission to the D.C. Bar is 1973."

EVIDENCE
Evidence in the nature of Executed copy of applicant's response to office action has been attached.
Original PDF file:
evi_66449251-20191011142505303142_._S24247ResponsetoOfficeActionasfiled.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals for industrial purposes; plant growth regulating preparations; fertilizers; chemical test paper; flour and starch for industrial purposes; unprocessed plastics (plastics in primary form); cellulose pulp; chemiground wood pulp; chemimechanical pulp; deinked pulp; dissolving wood pulp for manufacturing purposes; groundwood pulp; paper pulp; paper pulp for manufacturing purposes; sulphite pulp; thermomechanical pulp; wood pulp for manufacturing purposes; flocculants; cellulose
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: Chemicals for industrial purposes; plant growth regulating preparations; fertilizers; chemical test paper; flour and starch for industrial purposes; unprocessed plastics (plastics in primary form); unprocessed plastics in the nature of plastics in primary form; cellulose pulp; cellulous pulp; chemiground wood pulp; chemimechanical pulp; deinked pulp; dissolving wood pulp for manufacturing purposes; groundwood pulp; paper pulp; paper pulp for manufacturing purposes; sulphite pulp; thermomechanical pulp; wood pulp for manufacturing purposes; flocculants; celluloseClass 001 for Chemicals for industrial purposes; plant growth regulating preparations; fertilizers; chemical test paper; flour and starch for industrial purposes; unprocessed plastics in the nature of plastics in primary form; cellulous pulp; chemiground wood pulp; chemimechanical pulp; deinked pulp; dissolving wood pulp for manufacturing purposes; groundwood pulp; paper pulp; paper pulp for manufacturing purposes; sulphite pulp; thermomechanical pulp; wood pulp for manufacturing purposes; flocculants; cellulose
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 017 for Electrical insulating materials; chemical fiber, not for textile use; plastic sheeting for agricultural purposes; condenser papers; vulcanized fiber; semi-processed plastics; plastic film other than for wrapping for commercial or industrial use; synthetic rubber; adhesive tapes, other than for stationary and household purposes
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: Electrical insulating materials; chemical fiber, not for textile use; chemical fiber thread and yarn, not for textile use; plastic sheeting for agricultural purposes; condenser papers; condenser papers for electrical capacitors; vulcanized fiber; semi-processed plastics; plastic film other than for wrapping for commercial or industrial use; plastic film for packing, cushioning, or stuffing purposes for commercial or industrial use, other than for wrapping; synthetic rubber; adhesive tapes, other than for stationary and household purposes; adhesive tapes for industrial and commercial use, other than for stationery, medical and household purposesClass 017 for Electrical insulating materials; chemical fiber thread and yarn, not for textile use; plastic sheeting for agricultural purposes; condenser papers for electrical capacitors; vulcanized fiber; semi-processed plastics; plastic film for packing, cushioning, or stuffing purposes for commercial or industrial use, other than for wrapping; synthetic rubber; adhesive tapes for industrial and commercial use, other than for stationery, medical and household purposes
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 019 for Non-metallic building materials, namely, waterproofing membranes for roofing, floors and walls, namely, sub-structural waterproofing for tunnels, underpasses, and basements; building timber; construction materials, namely, non-metal flooring materials; non-metal roofing; non-metallic minerals for building or construction; veneer wood; wood paneling; construction materials in the nature of non-metal composite panel boards of wood pulp for building; shuttering, not of metal, for casting concrete
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: Non-metallic building materials, namely, waterproofing membranes for roofing, floors and walls, namely, sub-structural waterproofing for tunnels, underpasses, and basements; Non-metallic building materials, namely, waterproofing membranes for roofing, floors and walls in the nature of substructural waterproofing for tunnels, underpasses, and basements; building timber; construction materials, namely, non-metal flooring materials; non-metal roofing; non-metallic minerals for building or construction; veneer wood; wood paneling; construction materials in the nature of non-metal composite panel boards of wood pulp for building; construction materials in the nature of nonmetal composite panel boards of wood pulp for building; shuttering, not of metal, for casting concreteClass 019 for Non-metallic building materials, namely, waterproofing membranes for roofing, floors and walls in the nature of substructural waterproofing for tunnels, underpasses, and basements; building timber; construction materials, namely, non-metal flooring materials; non-metal roofing; non-metallic minerals for building or construction; veneer wood; wood paneling; construction materials in the nature of nonmetal composite panel boards of wood pulp for building; shuttering, not of metal, for casting concrete
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 031 for Fresh fruits; fresh vegetables; foodstuffs for animals; seeds and bulbs; live trees; live plants, namely, grasses; turf, natural; seedlings; saplings; natural flowers; live plants, namely, pasture grass; wood chips for the manufacture of wood pulp
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: Fresh fruits; fresh vegetables; foodstuffs for animals; seeds and bulbs; seeds and bulbs for planting; live trees; live plants, namely, grasses; turf, natural; seedlings; saplings; natural flowers; live plants, namely, pasture grass; wood chips for the manufacture of wood pulpClass 031 for Fresh fruits; fresh vegetables; foodstuffs for animals; seeds and bulbs for planting; live trees; live plants, namely, grasses; turf, natural; seedlings; saplings; natural flowers; live plants, namely, pasture grass; wood chips for the manufacture of wood pulp
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: GARY D. KRUGMAN. GARY D. KRUGMAN of SUGHRUE MION, PLLC, is located at

      2000 PENNSYLVANIA AVENUE, N.W.
      WASHINGTON, District of Columbia 20006
      US
The docket/reference number is S24247.

The phone number is 202-293-7060.

The fax number is 202-293-7860.

The email address is tm@sughrue.com

The applicants proposed attorney information: GARY D. KRUGMAN. Other appointed attorneys are and the attorneys of Sughrue Mion PLLC. GARY D. KRUGMAN of SUGHRUE MION, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2000 PENNSYLVANIA AVENUE N.W., #900
      WASHINGTON, District of Columbia 20006
      United States
The docket/reference number is S24247.

The phone number is 202-293-7060.

The fax number is 202-293-7860.

The email address is tm@sughrue.com

GARY D. KRUGMAN 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: GARY D. KRUGMAN. GARY D. KRUGMAN of SUGHRUE MION, PLLC, is located at

      2000 PENNSYLVANIA AVENUE, N.W.
      WASHINGTON, District of Columbia 20006
      US
The docket/reference number is S24247.

The phone number is 202-293-7060.

The fax number is 202-293-7860.

The email address is tm@sughrue.com

The applicants proposed correspondence information: GARY D. KRUGMAN. GARY D. KRUGMAN of SUGHRUE MION, PLLC, is located at

      2000 PENNSYLVANIA AVENUE N.W., #900
      WASHINGTON, District of Columbia 20006
      United States
The docket/reference number is S24247.

The phone number is 202-293-7060.

The fax number is 202-293-7860.

The email address is tm@sughrue.com

SIGNATURE(S)
Response Signature
Signature: /Garykrugman/     Date: 10/11/2019
Signatory's Name: Gary Krugman
Signatory's Position: Attorney of record, DC 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:    GARY D. KRUGMAN
   SUGHRUE MION, PLLC
   
   2000 PENNSYLVANIA AVENUE, N.W.
   WASHINGTON, District of Columbia 20006
Mailing Address:    GARY D. KRUGMAN
   SUGHRUE MION, PLLC
   2000 PENNSYLVANIA AVENUE N.W., #900
   WASHINGTON, District of Columbia 20006
        
Serial Number: 88441265
Internet Transmission Date: Fri Oct 11 14:47:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201910111447588724
98-88441265-610be214b88259c5c9e0ce6f9b37
f7493a4984fdc92bd53eaa85cf61e20597912-N/
A-N/A-20191011142505303142