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. 88486681 EAGLE(Standard Characters, see http://uspto.report/TM/88486681/mark.png) has been amended as follows:

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

The Examiner refuses registration under Section 2(d) of the Trademark Act only as to "metal washers." The applicant by this response deletes those goods, and therefore the refusal under Section 2(d) should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Grommeting machines, metal grommets and metal washers
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[ Canada application number 1967902 filed 06/10/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Grommeting machines, metal grommets and metal washers; Grommeting machinesClass 007 for Grommeting machines
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 [ Canada application number 1967902 filed 06/10/2019]. 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.

The applicant's current attorney information: Julianne Abelman. Julianne Abelman of ABELMAN, FRAYNE & SCHWAB, is located at

      10TH FLOOR
      666 THIRD AVENUE
      NEW YORK, New York 10017
      US
The docket/reference number is 879846.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is docket@lawabel.com

The applicants proposed attorney information: Julianne Abelman. Other appointed attorneys are Frank Terranella, Julie Seyler, Marie Anne Mastrovito and Erica Halstead. Julianne Abelman of ABELMAN, FRAYNE & SCHWAB, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      10TH FLOOR
      666 THIRD AVENUE
      NEW YORK, New York 10017
      United States
The docket/reference number is 879846.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is fterranella@lawabel.com

Julianne Abelman 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: JULIANNE ABELMAN. JULIANNE ABELMAN of ABELMAN, FRAYNE & SCHWAB, is located at

      10TH FLOOR
      666 THIRD AVENUE
      NEW YORK, New York 10017
      US
The docket/reference number is 879846.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is docket@lawabel.com; leabelman@lawabel.com

The applicants proposed correspondence information: Julianne Abelman. Julianne Abelman of ABELMAN, FRAYNE & SCHWAB, is located at

      10TH FLOOR
      666 THIRD AVENUE
      NEW YORK, New York 10017
      United States
The docket/reference number is 879846.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is fterranella@lawabel.com; docket@lawabel.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The applicant intends to rely on its home registration as the basis of this application. However, the foreign registration certificate is not yet available. Accordingly, the applicant requests suspension of this application pending the availability of the foreign registration.


SIGNATURE(S)
Response Signature
Signature: /ft/     Date: 12/03/2019
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for Owner, NY Bar member no. 1918697 (1984)

Signatory's Phone Number: 2129499022

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:    JULIANNE ABELMAN
   ABELMAN, FRAYNE & SCHWAB
   10TH FLOOR
   666 THIRD AVENUE
   NEW YORK, New York 10017
Mailing Address:    Julianne Abelman
   ABELMAN, FRAYNE & SCHWAB
   10TH FLOOR
   666 THIRD AVENUE
   NEW YORK, New York 10017
        
Serial Number: 88486681
Internet Transmission Date: Tue Dec 03 15:25:20 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20191203152520786
779-88486681-70080ff60fc8bc4bf651b6bf515
94757d84bf4ee74f12668bc1cb67d6bf8ab8-N/A
-N/A-20191203151955837917