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. 88490371 RZ(Standard Characters, see http://uspto.report/TM/88490371/mark.png) has been amended as follows:

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

Applicant respectfully traverses the refusal to register applicant’s trademark for a coupler, namely a metal coupler for connecting an airline to supplied air for use with an industrial respirator. The cited registrations are for dust masks not couplers used in sophisticated industrial respirators. The dust masks of the cited registrations do not have airlines, couplers or supplied air. They are merely masks that individuals wear. Applicant’s industrial respirator systems include headgear that is supplied pressurized air. The headgear is coupled to a supply of air by a metal coupler. The metal coupler is inserted into an outlet that is connected to a supply of pressurized air. It is a component in an entire sophisticated system.

Purchases of applicant’s products are sophisticated purchasers. The systems are expensive systems requiring special knowledge as to the environment in which they are used, the work being performed and the contaminants in the area. They would not be confused into believing that a seller of dust masks would be selling metal couplers used for these systems. Likewise, purchasers of registrant's goods are not purchasers of applicant’s couplers or their sophisticated systems. The channels of trade are completely different.

The cited evidence to show the channels of trade are similar do not include sophisticated industrial respirators. These are not sold through the same channels of trade as dust masks, and personal respirators which are what is shown in the cited evidence. As is apparent from the information provided, none show sophisticated industrial respirators that require coupling to a supply of pressurized air. The only couplers shown are those sold separately from masks, etc.

Applicant respectfully requests that the examiner reconsider the refusal, withdraw it and allow applicants registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 006 for Coupler, namely, a metal coupler for connecting an airline to supplied air for use with an industrial respirator
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/30/2018 and first used in commerce at least as early as 04/30/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Coupler, namely, a metal coupler for connecting an airline to supplied air for use with an industrial respirator; Coupler, namely, a metal coupler for connecting an airline to supplied air for use with an industrial respirator being a structural part of a respirator other than for artificial respirationClass 006 for Coupler, namely, a metal coupler for connecting an airline to supplied air for use with an industrial respirator being a structural part of a respirator other than for artificial respiration
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/30/2018 and first used in commerce at least as early as 04/30/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 006. The specimen(s) submitted consists of Company product catalog showing the RZ fitting/coupler on pages 2, 3 and 4.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-63240135132-20200317183210549278_._RZ_-_Specimen.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: RPB Safety, LLC, a limited liability company legally organized under the laws of Michigan, having an address of
      2807 Samoset Road
      Royal Oak, Michigan 48073
      United States

Proposed: RPB Safety, LLC, a limited liability company legally organized under the laws of Michigan, having an address of
      2807 Samoset Road
      Royal Oak, Michigan 48073
      United States
      Email Address: garth.ivory@rpbsafety.com

The owner's/holder's current attorney information: William H. Honaker. William H. Honaker of DICKINSON WRIGHT PLLC, is located at

      SUITE 300
      2600 WEST BIG BEAVER
      TROY, Michigan 48084
      United States
The docket/reference number is 73770-33.
      The phone number is 248-433-7381.
      The fax number is 844-670-6009.
      The email address is dwtrademarks@dickinsonwright.com

The owner's/holder's proposed attorney information: William H. Honaker. William H. Honaker of DICKINSON WRIGHT PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 300
      2600 WEST BIG BEAVER
      TROY, Michigan 48084
      United States
The docket/reference number is 73770-33.
      The phone number is 248-433-7381.
      The fax number is 844-670-6009.
      The email address is dwtrademarks@dickinsonwright.com

William H. Honaker 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):
      WILLIAM H. HONAKER
      PRIMARY EMAIL FOR CORRESPONDENCE: dwtrademarks@dickinsonwright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): whonaker@dickinsonwright.com; khopf@dickinsonwright.com

The docket/reference number is 73770-33.
Correspondence Information (proposed):
      William H. Honaker
      PRIMARY EMAIL FOR CORRESPONDENCE: dwtrademarks@dickinsonwright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): whonaker@dickinsonwright.com; khopf@dickinsonwright.com

The docket/reference number is 73770-33.

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)
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: /William H. Honaker/      Date: 03/17/2020
Signatory's Name: William H. Honaker
Signatory's Position: Attorney of Record
Signatory's Phone Number: 248-433-7381


Response Signature
Signature: /William H. Honaker/     Date: 03/17/2020
Signatory's Name: William H. Honaker
Signatory's Position: Attorney of Record

Signatory's Phone Number: 248-433-7381

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:    WILLIAM H. HONAKER
   DICKINSON WRIGHT PLLC
   SUITE 300
   2600 WEST BIG BEAVER
   TROY, Michigan 48084
Mailing Address:    William H. Honaker
   DICKINSON WRIGHT PLLC
   SUITE 300
   2600 WEST BIG BEAVER
   TROY, Michigan 48084
        
Serial Number: 88490371
Internet Transmission Date: Tue Mar 17 19:06:06 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202003171906068
92445-88490371-710ee91264d91f26737954b5c
84b98d34b392146f87f574439855f31f8152f1f0
-N/A-N/A-20200317183210549278