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. 88474355 TREND TOOL TECHNOLOGY (Stylized and/or with Design, see http://uspto.report/TM/88474355/mark.png) has been amended as follows:

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

Applicant amends the recitation of goods as set forth herein, including the addition of one class, namely, Class 18. Further, Applicant amends the application to include a disclaimer of the words TOOL TECHNOLOGY. Applicant states that it continues to rely on both the 1(b) and Section 44(e) bases for registration pending acceptance of the application for registration pursuant to Section 44.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Machine tools and tools for use with machine tools; power tools; electrically powered tools; cordless power tools; drills, bits, saws, jigs, screwdrivers, bushes, sanders, grinders, routers, hammers, staplers, nail guns, planers; tool holders; machines and apparatus, all for routing, cutting, drilling, grouting, slitting, slotting, grooving, trimming, jointing, engraving, carving, sharpening, shearing, enlarging, clamping and recessing; electric motors and pneumatic motors; vacuum extractors; bushes, lathes, machine tables; parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Machine tools and tools for use with machine tools; Machine tools and tools for use with machine tools, power tools, electrically powered tools, cordless power tools namely routers, electric cutters, router tables, jigs, spindle tooling in the nature of woodwork routers, power saw blades, electric planers, clamps, electric drills, electric drill bits, woodwork jointers, sanders, electric laminate trimmers, vacuum cleaners, linear guides, bushes in the nature of guide bushes for woodworking routers and cutters, electric hole cutters, templates for power operated routers, collets in the nature of power tool parts, power-operated shears, boring machines, countersinks, plugs to fill counter-bored holes, power operated screw and bolt removers, counter-bores, chucks for power drills, shank adaptors for power drills, wire brushes, power saws, saw machines, jig saws, electric knives, riveters, electric screwdrivers, earth augers, electric hammers, vices for use in the precision clamping of work pieces, power-operated wrenches, sharpening machines in the nature of grindstones and power-operated sharpening stones, woodworking scribes, power-operated screwdrivers, bits for screwdrivers, bushings, electric sanders, electric grinders, power staplers, electric nail guns, machine tool holders, power tool holders, cutting machines, drilling machines, grouting machines, electric slitting machines, slotting machines, grooving machines, trimming machines, electric jointing machines, engraving machines, electric carving machines, electric shearing machines, clamping machines, hardware recessing machines, electric motors and pneumatic motors for machines, non-medical vacuum extractors for cleaning, woodworking and construction purposes; power tools; machine parts and tools, namely, bushings, lathes, machine tables; electrically powered tools; power operated tool machines and apparatus, all for routing, cutting, drilling, grouting, slitting, slotting, grooving, trimming, jointing, engraving, carving, sharpening, shearing, enlarging, clamping and recessing; cordless power tools; electric motors and pneumatic motors for machines; drills, bits, saws, jigs, screwdrivers, bushes, sanders, grinders, routers, hammers, staplers, nail guns, planers; vacuum extractors; tool holders; bushes, lathes, machine tables being tools; machines and apparatus, all for routing, cutting, drilling, grouting, slitting, slotting, grooving, trimming, jointing, engraving, carving, sharpening, shearing, enlarging, clamping and recessing; structural parts and fittings for all the aforesaid goods; electric motors and pneumatic motors; bushes, lathes, machine tables; parts and fittings for all the aforesaid goodsClass 007 for Machine tools and tools for use with machine tools, power tools, electrically powered tools, cordless power tools namely routers, electric cutters, router tables, jigs, spindle tooling in the nature of woodwork routers, power saw blades, electric planers, clamps, electric drills, electric drill bits, woodwork jointers, sanders, electric laminate trimmers, vacuum cleaners, linear guides, bushes in the nature of guide bushes for woodworking routers and cutters, electric hole cutters, templates for power operated routers, collets in the nature of power tool parts, power-operated shears, boring machines, countersinks, plugs to fill counter-bored holes, power operated screw and bolt removers, counter-bores, chucks for power drills, shank adaptors for power drills, wire brushes, power saws, saw machines, jig saws, electric knives, riveters, electric screwdrivers, earth augers, electric hammers, vices for use in the precision clamping of work pieces, power-operated wrenches, sharpening machines in the nature of grindstones and power-operated sharpening stones, woodworking scribes, power-operated screwdrivers, bits for screwdrivers, bushings, electric sanders, electric grinders, power staplers, electric nail guns, machine tool holders, power tool holders, cutting machines, drilling machines, grouting machines, electric slitting machines, slotting machines, grooving machines, trimming machines, electric jointing machines, engraving machines, electric carving machines, electric shearing machines, clamping machines, hardware recessing machines, electric motors and pneumatic motors for machines, non-medical vacuum extractors for cleaning, woodworking and construction purposes; machine parts and tools, namely, bushings, lathes, machine tables; power operated tool machines and apparatus, all for routing, cutting, drilling, grouting, slitting, slotting, grooving, trimming, jointing, engraving, carving, sharpening, shearing, enlarging, clamping and recessing; electric motors and pneumatic motors for machines; vacuum extractors; bushes, lathes, machine tables being tools; structural parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Hand tools and implements (hand operated); drills, saws, blades; tool bags and tool holders; parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Hand tools and implements (hand operated); Tool holders; drills, saws, blades; hand tools and hand operated implements, namely routers, woodworking cutters, jigs being templates for use with woodworking tools, spindle tooling in the nature of non-electric woodworking routers, saw blades, planers, carpenter's clamps, drills, bits for hand drills, sharpening machines in the nature of grindstones and sharpening stones, woodworking scribes, woodworking jointers, laminate trimmers, hole cutters, chisels, collets, feather boards, shears, boring tools in the nature of dowel drills, counterbores, hand held drills, countersinks, screw and bolt removers, chucks, hand drivers, shank adaptors, saws, sharpening stones, knives, knife steels, pliers, riveters, screwdrivers, augers, axes, hammers, sanders, grinders, hand-powered staplers, hand-powered nail guns, vices and wrenches; tool bags and tool holders; blades for hand saws and jig saws; parts and fittings for all the aforesaid goods; hand tools namely drills, saws, blades; structural parts and fittings for all the aforesaid goodsClass 008 for Tool holders; hand tools and hand operated implements, namely routers, woodworking cutters, jigs being templates for use with woodworking tools, spindle tooling in the nature of non-electric woodworking routers, saw blades, planers, carpenter's clamps, drills, bits for hand drills, sharpening machines in the nature of grindstones and sharpening stones, woodworking scribes, woodworking jointers, laminate trimmers, hole cutters, chisels, collets, feather boards, shears, boring tools in the nature of dowel drills, counterbores, hand held drills, countersinks, screw and bolt removers, chucks, hand drivers, shank adaptors, saws, sharpening stones, knives, knife steels, pliers, riveters, screwdrivers, augers, axes, hammers, sanders, grinders, hand-powered staplers, hand-powered nail guns, vices and wrenches; blades for hand saws and jig saws; hand tools namely drills, saws, blades; structural parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software; computer-based trainers and simulators; video and audio tapes, compact discs, films; recording discs and tapes; publications in electronic form; design and drawing software; measuring tape; gauges; parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer software; Downloadable computer software for use in the field of "do it yourself" remodelling and construction, woodworking, and routing, including instruction regarding the use of power tools and hand-operated tools; computer-based trainers and simulators; computer-based trainers and simulators for use in the field of "do it yourself" remodelling and construction, woodworking, routing, and providing information and instruction regarding the use of power tools and hand-operated tools; video and audio tapes, compact discs, films; pre-recorded video and audio tapes, compact discs, films all featuring information and instruction in the field of "do it yourself" remodelling and construction, woodworking, routing, and regarding the use of power tools and hand-operated tools; recording discs and tapes; publications in electronic form, namely pamphlets, books, brochures, newsletters, magazines, booklets and instructional materials in the field of "do it yourself" remodelling and construction, woodworking, routing, and regarding the use of power tools and hand-operated tools; publications in electronic form; downloadable software for designing and drawing software for use in construction, remodelling, furniture, or woodworking projects; design and drawing software; measuring tape; depth gauges for setting the height of woodworking routers, cutters and saw blades; gauges; structural parts and fittings for all the aforesaid goods; parts and fittings for all the aforesaid goodsClass 009 for Downloadable computer software for use in the field of "do it yourself" remodelling and construction, woodworking, and routing, including instruction regarding the use of power tools and hand-operated tools; computer-based trainers and simulators for use in the field of "do it yourself" remodelling and construction, woodworking, routing, and providing information and instruction regarding the use of power tools and hand-operated tools; pre-recorded video and audio tapes, compact discs, films all featuring information and instruction in the field of "do it yourself" remodelling and construction, woodworking, routing, and regarding the use of power tools and hand-operated tools; publications in electronic form, namely pamphlets, books, brochures, newsletters, magazines, booklets and instructional materials in the field of "do it yourself" remodelling and construction, woodworking, routing, and regarding the use of power tools and hand-operated tools; downloadable software for designing and drawing software for use in construction, remodelling, furniture, or woodworking projects; measuring tape; depth gauges for setting the height of woodworking routers, cutters and saw blades; structural parts and fittings for all the aforesaid goods
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 018 for Tool bags, sold empty
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018004011 filed 12/21/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ European Union Trademark - EUTM registration number 018004011 registered 05/17/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-38801130-144428653_._EUTM_Certificate_of_Registration.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The applicant's current attorney information: Julie Gregory Ray. Julie Gregory Ray of MIDDLETON REUTLINGER, is located at

      SUITE 2600
      401 S. FOURTH STREET
      LOUISVILLE, Kentucky 40202
      US

The phone number is 502-584-1135.

The fax number is 502-561-0442.

The email address is jray@middletonlaw.com

The applicants proposed attorney information: Julie Gregory Ray. Julie Gregory Ray of MIDDLETON REUTLINGER, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 2600
      401 S. FOURTH STREET
      LOUISVILLE, Kentucky 40202
      United States

The phone number is 502-584-1135.

The fax number is 502-561-0442.

The email address is jray@middletonlaw.com

Julie Gregory Ray 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: JULIE GREGORY RAY. JULIE GREGORY RAY of MIDDLETON REUTLINGER, is located at

      SUITE 2600
      401 S. FOURTH STREET
      LOUISVILLE, Kentucky 40202
      US

The phone number is 502-584-1135.

The fax number is 502-561-0442.

The email address is jray@middletonlaw.com

The applicants proposed correspondence information: Julie Gregory Ray. Julie Gregory Ray of MIDDLETON REUTLINGER, is located at

      SUITE 2600
      401 S. FOURTH STREET
      LOUISVILLE, Kentucky 40202
      United States

The phone number is 502-584-1135.

The fax number is 502-561-0442.

The email address is jray@middletonlaw.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use TOOL TECHNOLOGY apart from the mark as shown.


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: /Julie Gregory Ray/      Date: 01/22/2020
Signatory's Name: Julie Gregory Ray
Signatory's Position: Attorney of Record, Member of Kentucky Bar
Signatory's Phone Number: 5025841135


Response Signature
Signature: /Julie Gregory Ray/     Date: 01/22/2020
Signatory's Name: Julie Gregory Ray
Signatory's Position: Attorney of Record, Member of Kentucky Bar

Signatory's Phone Number: 5025841135

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:    JULIE GREGORY RAY
   MIDDLETON REUTLINGER
   SUITE 2600
   401 S. FOURTH STREET
   LOUISVILLE, Kentucky 40202
Mailing Address:    Julie Gregory Ray
   MIDDLETON REUTLINGER
   SUITE 2600
   401 S. FOURTH STREET
   LOUISVILLE, Kentucky 40202
        
RAM Sale Number: 88474355
RAM Accounting Date: 01/22/2020
        
Serial Number: 88474355
Internet Transmission Date: Wed Jan 22 15:20:35 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-202001221520355041
47-88474355-70018347953c422e793e8434c171
bc1ccbfdabc3481b46b92ebe34c6e765d7eeb-CC
-20336363-20200122144428653339