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. 88454996 ENHANCE(Standard Characters, see http://uspto.report/TM/88454996/mark.png) has been amended as follows:

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

This filing is in response to the office action issued August 29, 2019, which the applicant has carefully considered.

Prior Pending Application

The examining attorney has indicted that Application Serial No. 88444166 may be cited against the pending application.  Applicant reserves the right to respond to any refusal should a refusal issue.

Amendment to Identification of Goods 

In response to the examining attorney's comments, Applicant is amending the goods currently identified as "Primer for preparing surfaces for the application of adhesives" in Class 1 to "Adhesive primer for preparing surfaces for the application of adhesives" in Class 1 and "Primer for preparing surfaces for the application of adhesives" in Class 2.

The examining attorney has also objected to the identification of goods consisting of "Adhesives and glues for use in flooring applications" in Class 1 on the basis that it can include goods in multiple classes, specifically adhesive tape in Class 17.  Applicant respectfully submits that this is not necessary.

The Acceptable Identification of Goods and Services Manual (the "Manual") makes it clear that "Adhesives and glues" do not encompass "adhesive tape."  As the examining attorney notes, "Adhesives and glues for industrial and commercial use" is identified by the Manual as acceptable in Class 1.  The Manual also identifies "Adhesive tape for industrial and commercial use" as acceptable in Class 17.  If "adhesive tape" were encompassed by the wording "Adhesives and glues," then this wording authorized by the Manual would be overly broad and include adhesive tape properly classified in Class 17.

Moreover, the wording "Adhesives for use in flooring applications" is acceptable pursuant to the Manual (under the accepted identification "Adhesives for {indicate specific industry or indicate general industrial use, if accurate}") and the wording "Glues for use in the flooring industry" is acceptable pursuant to the Manual (under the accepted identification "Glues for use in {indicate specific industry} industry").  Printouts of the relevant entries from the Manual are submitted with this response.

Under Section 1402.01(a) the Trademark Manual of Examining Procedure (October 2018) ("TMEP"), an identification of goods and services will be considered acceptable if it meets the standards (not necessarily the language) set forth in the Manual.   "Adhesives and glues for use in flooring applications" is analogous to the combination of "Adhesives for use in flooring applications" and "Glues for use in the flooring industry."  Because it is specific and does not include goods which may be in multiple classes, "Adhesives and glues for use in flooring applications" is acceptable as an identification of the goods under the TMEP.

Finally, the applicant notes that the identical wording of "Adhesives and glues for use in flooring applications" has been accepted in nine previous registrations issued to applicant by the Patent and Trademark Office, from Registration No. 5053523 issued on October 4, 2016 through Registration No. 5777675 issued on June 11, 2019.  These registrations were examined by multiple examining attorneys and the wording "Adhesives and glues for use in flooring applications" was accepted without objection in each case.  TESS printouts of the details of these registrations are submitted as evidence with this response.

EVIDENCE
Evidence in the nature of entries from the Acceptable Identification of Goods and Services Manual and printouts of TESS details of prior registrations has been attached.
Original PDF file:
evi_679810710-20191004193303399268_._Trademark_ID_Manual_Print_Results.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_679810710-20191004193303399268_._List_of_Registrations_with_Adhesives_and_Glues.pdf
Converted PDF file(s) ( 19 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemical preparation used to prepare surfaces for the application of adhesives; Primer for preparing surfaces for the application of adhesives; Adhesives and glues for use in flooring applications
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2018 and first used in commerce at least as early as 05/00/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Chemical preparation used to prepare surfaces for the application of adhesives; Primer for preparing surfaces for the application of adhesives; Adhesive primer for preparing surfaces for the application of adhesives; Adhesives and glues for use in flooring applicationsClass 001 for Chemical preparation used to prepare surfaces for the application of adhesives; Adhesive primer for preparing surfaces for the application of adhesives; Adhesives and glues for use in flooring applications
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2018 and first used in commerce at least as early as 05/00/2018 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 002 for Primer for preparing surfaces for the application of adhesives
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2018 and first used in commerce at least as early as 05/00/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 002 . The specimen(s) submitted consists of a photograph of a container of goods .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-679810710-20191004193303399268_._Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Sean C. Fifield. Sean C. Fifield of LOCKE LORD LLP, is located at

      111 S. WACKER DR.
      CHICAGO, Illinois 60606
      US
The docket/reference number is 8880100.4031.

The phone number is 213-687-6718.

The fax number is 312-896-6787.

The email address is trademark@lockelord.com

The applicants proposed attorney information: Sean C. Fifield. Other appointed attorneys are Alan B. Clement, Mark R. Backofen, Robert E. Nail, Glenn Pudelka, Rory J. Radding, H. Straat Tenney and David Van Der Laan. Sean C. Fifield of Locke Lord 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

      111 South Wacker Drive
      Chicago, Illinois 60606
      United States
The docket/reference number is 8880100.4031.

The phone number is 213-687-6718.

The fax number is 312-896-6787.

The email address is trademark@lockelord.com

Sean C. Fifield 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: SEAN C. FIFIELD. SEAN C. FIFIELD of LOCKE LORD LLP, is located at

      111 S. WACKER DR.
      CHICAGO, Illinois 60606
      US
The docket/reference number is 8880100.4031.

The phone number is 213-687-6718.

The fax number is 312-896-6787.

The email address is trademark@lockelord.com; sfifield@lockelord.com; ischeckel@lockelord.com

The applicants proposed correspondence information: Sean C. Fifield. Sean C. Fifield of Locke Lord LLP, is located at

      111 South Wacker Drive
      Chicago, Illinois 60606
      United States
The docket/reference number is 8880100.4031.

The phone number is 213-687-6718.

The fax number is 312-896-6787.

The email address is trademark@lockelord.com; sfifield@lockelord.com; ischeckel@lockelord.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Robert K.Ddamulira/      Date: 10/04/2019
Signatory's Name: Robert K. Ddamulira
Signatory's Position: Vice President, Technology
Signatory's Phone Number: 706-712-5821


Response Signature
Signature: /scf/     Date: 10/04/2019
Signatory's Name: Sean C. Fifield
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 2136876718

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:    SEAN C. FIFIELD
   LOCKE LORD LLP
   
   111 S. WACKER DR.
   CHICAGO, Illinois 60606
Mailing Address:    Sean C. Fifield
   Locke Lord LLP
   111 South Wacker Drive
   Chicago, Illinois 60606
        
RAM Sale Number: 88454996
RAM Accounting Date: 10/07/2019
        
Serial Number: 88454996
Internet Transmission Date: Sat Oct 05 00:56:30 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20191005005630027
788-88454996-6107ab0ed3ca676a0265bcb87cd
1805272925cfc481e469a0149d4fd3878945f1-C
C-56281569-20191004193303399268