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. 88464661 WE (Stylized and/or with Design, see http://uspto.report/TM/88464661/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 Welding guns; Welding electrodes; Welding machine components, including cap adaptors, shunts, electrode holders, electrodes, and buss bars
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 12/31/1979 and first used in commerce at least as early as 12/31/1979 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Welding guns; Electric welding guns; Welding electrodes; Welding machine components, including cap adaptors, shunts, electrode holders, electrodes, and buss bars; and Welding machine components, namely adaptors for electrodes and electrode caps, shunts, electrode holders, electrodes, electrode caps, and busbars.Class 007 for Electric welding guns; Welding electrodes; and Welding machine components, namely adaptors for electrodes and electrode caps, shunts, electrode holders, electrodes, electrode caps, and busbars.
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 12/31/1979 and first used in commerce at least as early as 12/31/1979 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 007 . The specimen(s) submitted consists of image of one of the goods engraved with the mark .
"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]. Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, engineering, development, and testing services in the fields of welding and material joining; and Custom manufacture of components for welding machines and welding guns
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 12/31/1979 and first used in commerce at least as early as 12/31/1979 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Design, engineering, development, and testing services in the fields of welding and material joining; Design, engineering, development, and testing services in the fields of welding and material joining.; and Custom manufacture of components for welding machines and welding gunsClass 042 for Design, engineering, development, and testing services in the fields of welding and material joining.
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 12/31/1979 and first used in commerce at least as early as 12/31/1979 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 040 for Custom manufacture of components for welding machines and welding guns.
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 12/31/1979 and first used in commerce at least as early as 12/31/1979 , and is now in use in such commerce.

The applicant's current attorney information: James D. Stevens. James D. Stevens of REISING ETHINGTON P.C., is located at

      755 W BIG BEAVER ROAD, STE. 1850
      TROY, Michigan 48084
      US
The docket/reference number is 8677-3005-1.

The phone number is 248-689-3500.

The fax number is 248-689-4071.

The email address is docketing@reising.com

The applicants proposed attorney information: James D. Stevens. Other appointed attorneys are Colleen N. Shovlin. James D. Stevens of REISING ETHINGTON P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      755 W BIG BEAVER ROAD, STE. 1850
      TROY, Michigan 48084
      United States
The docket/reference number is 8677-3005-1.

The phone number is 248-689-3500.

The fax number is 248-689-4071.

The email address is docketing@reising.com

James D. Stevens 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: JAMES D. STEVENS. JAMES D. STEVENS of REISING ETHINGTON P.C., is located at

      755 W BIG BEAVER ROAD, STE. 1850
      TROY, Michigan 48084
      US
The docket/reference number is 8677-3005-1.

The phone number is 248-689-3500.

The fax number is 248-689-4071.

The email address is docketing@reising.com; stevens@reising.com; shovlin@reising.com

The applicants proposed correspondence information: James D. Stevens. James D. Stevens of REISING ETHINGTON P.C., is located at

      755 W BIG BEAVER ROAD, STE. 1850
      TROY, Michigan 48084
      United States
The docket/reference number is 8677-3005-1.

The phone number is 248-689-3500.

The fax number is 248-689-4071.

The email address is docketing@reising.com; stevens@reising.com; shovlin@reising.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
In reply to the Office action sent on August 30, 2019, Applicant is submitting (1) amendments to the identification of goods and services, as required in the Office action, (2) payment of the fee for one additional international class under 37 C.F.R. § 2.6(a)(1)(iii), and (3) a substitute specimen for class 007. In the Office action, the examiner stated that the previously submitted specimen was acceptable for Class 040, and thus Applicant is not submitting another specimen for this new class.


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: /Colleen N. Shovlin/      Date: 02/07/2020
Signatory's Name: Colleen N. Shovlin
Signatory's Position: Attorney for Applicant, State Bar of Michigan
Signatory's Phone Number: 248-689-3500


Response Signature
Signature: /Colleen N. Shovlin/     Date: 02/07/2020
Signatory's Name: Colleen N. Shovlin
Signatory's Position: Attorney for Applicant, State Bar of Michigan

Signatory's Phone Number: 248-689-3500

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:    JAMES D. STEVENS
   REISING ETHINGTON P.C.
   
   755 W BIG BEAVER ROAD, STE. 1850
   TROY, Michigan 48084
Mailing Address:    James D. Stevens
   REISING ETHINGTON P.C.
   755 W BIG BEAVER ROAD, STE. 1850
   TROY, Michigan 48084
        
RAM Sale Number: 88464661
RAM Accounting Date: 02/07/2020
        
Serial Number: 88464661
Internet Transmission Date: Fri Feb 07 19:06:35 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20200207190635944
459-88464661-7004158b2a86745db8f14e428c6
e058d2a58f4a4d7b78f9e8a679c920bdcd58010-
DA-06358182-20200207185518251729