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. 88495995 ULTRA(Standard Characters, see http://uspto.report/TM/88495995/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 002 for Carbon black for industrial use as a pigment in the plastics, inks, toner, and paint industries
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 02/18/1986 and first used in commerce at least as early as 02/18/1986 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Carbon black for industrial use as a pigment in the plastics, inks, toner, and paint industries; Carbon black as a pigment in the plastics, inks, toner, and paint industriesClass 002 for Carbon black as a pigment in the plastics, inks, toner, and paint industries
Deleted Filing Basis: 1(a)
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: Birla Carbon U.S.A., Inc., a corporation of Delaware, having an address of
      1800 West Oak Commons Court
      Marietta, Georgia 30062-2253
      United States

Proposed: Birla Carbon U.S.A., Inc., a corporation of Delaware, having an address of
      1800 West Oak Commons Court
      Marietta, Georgia 30062-2253
      United States
      Email Address: phx_tmdocketing@ballardspahr.com

The owner's/holder's current attorney information: Lawrence K. Nodine. Lawrence K. Nodine of BALLARD SPAHR LLP, is located at

      999 PEACHTREE STREET, NE, SUITE 1000
      ATLANTA, Georgia 30309-3915
      United States
The docket/reference number is 00320033.
      The phone number is 678-420-9300.
      The fax number is 678-420-9301.
      The email address is tmdocketing@ballardspahr.com

The owner's/holder's proposed attorney information: Lawrence K. Nodine. Other appointed attorneys are all attorneys at Ballard Spahr LLP. Lawrence K. Nodine of Ballard Spahr LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      999 Peachtree Street, NE, Suite 1000
      Atlanta, Georgia 30309-3915
      United States
The docket/reference number is 00320033.
      The phone number is 678-420-9300.
      The fax number is 678-420-9301.
      The email address is tmdocketing@ballardspahr.com

Lawrence K. Nodine 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):
      LAWRENCE K. NODINE
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@ballardspahr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): greenda@ballardspahr.com

The docket/reference number is 00320033.
Correspondence Information (proposed):
      Lawrence K. Nodine
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@ballardspahr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): echolsl@ballardspahr.com; nodinel@ballardspahr.com; greenda@ballardspahr.com

The docket/reference number is 00320033.

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: / Kevin W. Hathcock /      Date: 03/13/2020
Signatory's Name: Kevin W. Hathcock
Signatory's Position: Deputy General Counsel, Birla Carbon U.S.A., Inc.
Signatory's Phone Number: [not provided]


Response Signature
Signature: /Dacia A. Green/     Date: 03/13/2020
Signatory's Name: Dacia A. Green
Signatory's Position: Associate Attorney of Ballard Spahr LLP, GA Bar Member

Signatory's Phone Number: 6784209388

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:    LAWRENCE K. NODINE
   BALLARD SPAHR LLP
   
   999 PEACHTREE STREET, NE, SUITE 1000
   ATLANTA, Georgia 30309-3915
Mailing Address:    Lawrence K. Nodine
   Ballard Spahr LLP
   999 Peachtree Street, NE, Suite 1000
   Atlanta, Georgia 30309-3915
        
Serial Number: 88495995
Internet Transmission Date: Fri Mar 13 13:40:20 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20200313134020646
510-88495995-710a6c34a92ed2466e724f54c92
d821e49233aee2ccbf5e58fba8d2662d812ac5c2
-N/A-N/A-20200312114644751595