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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88471552 |
LAW OFFICE ASSIGNED |
LAW OFFICE 101 |
MARK SECTION |
MARK |
http://uspto.report/TM/88471552/mark.png |
LITERAL ELEMENT |
PRIME GUARD |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) |
NAME |
PAW ACQUISITION, LLC |
STREET |
4500 Malone Rd., Ste 2 |
CITY |
Memphis |
STATE |
Tennessee |
ZIP/POSTAL CODE |
38118-7314 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
901-579-3128 |
EMAIL |
trademarks@bakerdonelson.com |
OWNER SECTION (proposed) |
NAME |
PAW ACQUISITION, LLC |
STREET |
4500 Malone Rd., Ste 2 |
CITY |
Memphis |
STATE |
Tennessee |
ZIP/POSTAL CODE |
38118-7314 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
901-579-3128 |
EMAIL |
mike.quinlan@highlineaftermarket.com |
GOODS AND/OR SERVICES SECTION (001) (current) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
Diesel exhaust fluid; chemical additives for fuel treatment; cooling additives for radiators |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (001) (proposed) |
INTERNATIONAL CLASS |
001 |
TRACKED TEXT DESCRIPTION |
Diesel exhaust fluid; chemical additives for fuel treatment; cooling additives for radiators |
FINAL DESCRIPTION |
Diesel exhaust fluid |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (002) (current) |
INTERNATIONAL CLASS |
002 |
DESCRIPTION |
Automotive rubberized undercoating |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (002) (proposed) |
INTERNATIONAL CLASS |
002 |
TRACKED TEXT DESCRIPTION |
Automotive rubberized undercoating; Automotive rubberized
undercoating for preventing corrosion, for sound deadening and for insulation |
FINAL DESCRIPTION |
Automotive rubberized undercoating for preventing corrosion, for sound deadening and for insulation |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (003) (current) |
INTERNATIONAL CLASS |
003 |
DESCRIPTION |
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) |
GOODS AND/OR SERVICES SECTION (003) (proposed) |
INTERNATIONAL CLASS |
003 |
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 cleaner |
FINAL DESCRIPTION |
Automotive glass cleaner; car washing preparations; automotive windshield wash; automotive foam cleaning preparations |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (004) (current) |
INTERNATIONAL CLASS |
004 |
DESCRIPTION |
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) |
GOODS AND/OR SERVICES SECTION (004) (proposed) |
INTERNATIONAL CLASS |
004 |
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 lubricants |
FINAL DESCRIPTION |
Belt dressings |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (012) (no change) |
ATTORNEY INFORMATION (current) |
NAME |
Wendy Robertson |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC |
STREET |
6060 POPLAR AVENUE, SUITE 440 |
CITY |
MEMPHIS |
STATE |
Tennessee |
POSTAL CODE |
38119 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
901-579-3128 |
EMAIL |
trademarks@bakerdonelson.com |
DOCKET/REFERENCE NUMBER |
2936987-03 |
ATTORNEY INFORMATION (proposed) |
NAME |
Wendy Robertson |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC |
STREET |
6060 POPLAR AVENUE, SUITE 440 |
CITY |
MEMPHIS |
STATE |
Tennessee |
POSTAL CODE |
38119 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
901-579-3128 |
EMAIL |
trademarks@bakerdonelson.com |
DOCKET/REFERENCE NUMBER |
2936987-03 |
CORRESPONDENCE INFORMATION (current) |
NAME |
WENDY ROBERTSON |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@bakerdonelson.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
2936987-03 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Wendy Robertson |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@bakerdonelson.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
2936987-03 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/wrobertson/ |
SIGNATORY'S NAME |
Wendy Robertson |
SIGNATORY'S POSITION |
Attorney of record, Tennessee bar member |
SIGNATORY'S PHONE NUMBER |
901-579-3128 |
DATE SIGNED |
03/02/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Mar 02 14:20:21 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.X-20
200302142021490599-884715
52-7105f4e4196b44c8172285
c793d230b249707563b73b3c8
942bab31efd3b53384-N/A-N/
A-20200302101938609257 |
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