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. 88471552 PRIME GUARD(Standard Characters, see http://uspto.report/TM/88471552/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 001 for Diesel exhaust fluid; chemical additives for fuel treatment; cooling additives for radiators
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: Diesel exhaust fluid; chemical additives for fuel treatment; cooling additives for radiatorsClass 001 for Diesel exhaust fluid
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:
Current: Class 002 for Automotive rubberized undercoating
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: Automotive rubberized undercoating; Automotive rubberized undercoating for preventing corrosion, for sound deadening and for insulationClass 002 for Automotive rubberized undercoating for preventing corrosion, for sound deadening and for insulation
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:
Current: Class 003 for Automotive glass cleaner; car washing preparations; automotive degreaser; automotive windshield wash; automotive air intake cleaners; battery cleaner and protector; electric parts cleaner; automotive foam cleaner
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: Automotive glass cleaner; car washing preparations; automotive degreaser; automotive windshield wash; automotive foam cleaning preparations; automotive air intake cleaners; battery cleaner and protector; electric parts cleaner; automotive foam cleanerClass 003 for Automotive glass cleaner; car washing preparations; automotive windshield wash; automotive foam cleaning preparations
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:
Current: Class 004 for Belt dressings; chain lubricant; automotive multipurpose lubricants and penetrating oils; automotive silicone lubricants; lubricating white lithium grease; hydraulic jack oil; automotive silicone lubricants
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: Belt dressings; chain lubricant; automotive multipurpose lubricants and penetrating oils; automotive silicone lubricants; lubricating white lithium grease; hydraulic jack oil; automotive silicone lubricantsClass 004 for Belt dressings
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: PAW ACQUISITION, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4500 Malone Rd., Ste 2
      Memphis, Tennessee 38118-7314
      United States
      Email Address: trademarks@bakerdonelson.com
      901-579-3128
Proposed: PAW ACQUISITION, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4500 Malone Rd., Ste 2
      Memphis, Tennessee 38118-7314
      United States
      Email Address: mike.quinlan@highlineaftermarket.com
      901-579-3128

The owner's/holder's current attorney information: Wendy Robertson. Wendy Robertson of BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC, is located at

      6060 POPLAR AVENUE, SUITE 440
      MEMPHIS, Tennessee 38119
      United States
The docket/reference number is 2936987-03.
      The phone number is 901-579-3128.
      The email address is trademarks@bakerdonelson.com

The owner's/holder's proposed attorney information: Wendy Robertson. Wendy Robertson of BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6060 POPLAR AVENUE, SUITE 440
      MEMPHIS, Tennessee 38119
      United States
The docket/reference number is 2936987-03.
      The phone number is 901-579-3128.
      The email address is trademarks@bakerdonelson.com

Wendy Robertson 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.Correspondence Information (current):
      WENDY ROBERTSON
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@bakerdonelson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 2936987-03.
Correspondence Information (proposed):
      Wendy Robertson
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@bakerdonelson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 2936987-03.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /wrobertson/     Date: 03/02/2020
Signatory's Name: Wendy Robertson
Signatory's Position: Attorney of record, Tennessee bar member

Signatory's Phone Number: 901-579-3128

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:    WENDY ROBERTSON
   BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC
   
   6060 POPLAR AVENUE, SUITE 440
   MEMPHIS, Tennessee 38119
Mailing Address:    Wendy Robertson
   BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC
   6060 POPLAR AVENUE, SUITE 440
   MEMPHIS, Tennessee 38119
        
Serial Number: 88471552
Internet Transmission Date: Mon Mar 02 14:20:21 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20200302142021490
599-88471552-7105f4e4196b44c8172285c793d
230b249707563b73b3c8942bab31efd3b53384-N
/A-N/A-20200302101938609257