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. 88499463 OREGON (Stylized and/or with Design, see http://uspto.report/TM/88499463/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Electric generators; portable electric power generators; component parts and accessories for electric generators and portable electric power generators; high pressure washers; pressure washing machines; component parts and accessories for high pressure washers and pressure washing machines; snow throwers; snow blowers; component parts and accessories for snow throwers and snow blowers
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.

Proposed:
Tracked Text Description: Electric generators; portable electric power generators; component parts and accessories for electric generators and portable electric power generators; component parts for electric generators and portable electric power generators and accessories in the nature of fitted covers for electric generators and portable electric power generators; high pressure washers; pressure washing machines; component parts and accessories for high pressure washers and pressure washing machines; component parts for high pressure washers and pressure washing machines and accessories in the nature of spray wands, nozzles, hoses, power-operated spray guns and fittings for high pressure washers and pressure washing machines; snow throwers; snow blowers; component parts and accessories for snow throwers and snow blowers; component parts for snow throwers and snow blowers and accessories in the nature of fitted covers, paddles, blades, and chutes for snow throwers and snow blowersClass 007 for Electric generators; portable electric power generators; component parts for electric generators and portable electric power generators and accessories in the nature of fitted covers for electric generators and portable electric power generators; high pressure washers; pressure washing machines; component parts for high pressure washers and pressure washing machines and accessories in the nature of spray wands, nozzles, hoses, power-operated spray guns and fittings for high pressure washers and pressure washing machines; snow throwers; snow blowers; component parts for snow throwers and snow blowers and accessories in the nature of fitted covers, paddles, blades, and chutes for snow throwers and snow blowers
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.

The applicant's current attorney information: Jeffrey P. Dunning. Jeffrey P. Dunning of GREENBERG TRAURIG, LLP, is located at

      SUITE 3100
      77 W. WACKER DRIVE
      CHICAGO, Illinois 60601
      US
The docket/reference number is 135133.01050.

The phone number is 312-456-8400.

The fax number is 312.456.8435.

The email address is chiipmail@gtlaw.com

The applicants proposed attorney information: Jeffrey P. Dunning. Other appointed attorneys are Mark R. Galis, Herbert H. Finn, Richard D. Harris, Gary R. Jarosik, Keith R. Jarosik, James J. Lukas, Jr., Eric J. Maiers, Jeffrey G. Mote, Cameron M. Nelson, Howard E. Silverman, Barry Horwitz, Matthew J. Levinstein, Marc Trachtenberg, Benjamin R. Gilford, Jonathan E. Giroux, Jacqueline V. Brousseau, Callie Sand, Michael R. Friedman, Sara Skulman, Chase Means, Maja Sherman. Jeffrey P. Dunning of GREENBERG TRAURIG, 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

      SUITE 3100
      77 W. WACKER DRIVE
      CHICAGO, Illinois 60601
      United States
The docket/reference number is 135133.01050.

The phone number is 312-456-8400.

The fax number is 312.456.8435.

The email address is chiipmail@gtlaw.com

Jeffrey P. Dunning 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: JEFFREY P. DUNNING. JEFFREY P. DUNNING of GREENBERG TRAURIG, LLP, is located at

      SUITE 3100
      77 W. WACKER DRIVE
      CHICAGO, Illinois 60601
      US
The docket/reference number is 135133.01050.

The phone number is 312-456-8400.

The fax number is 312.456.8435.

The email address is chiipmail@gtlaw.com

The applicants proposed correspondence information: Jeffrey P. Dunning. Jeffrey P. Dunning of GREENBERG TRAURIG, LLP, is located at

      SUITE 3100
      77 W. WACKER DRIVE
      CHICAGO, Illinois 60601
      United States
The docket/reference number is 135133.01050.

The phone number is 312-456-8400.

The fax number is 312.456.8435.

The email address is chiipmail@gtlaw.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 5372629, 4459489, 4376750, 2889236, 3789762 and others


SIGNATURE(S)
Response Signature
Signature: /Jeffrey P. Dunning/     Date: 11/05/2019
Signatory's Name: Jeffrey P. Dunning
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312.456.8400

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:    JEFFREY P. DUNNING
   GREENBERG TRAURIG, LLP
   SUITE 3100
   77 W. WACKER DRIVE
   CHICAGO, Illinois 60601
Mailing Address:    Jeffrey P. Dunning
   GREENBERG TRAURIG, LLP
   SUITE 3100
   77 W. WACKER DRIVE
   CHICAGO, Illinois 60601
        
Serial Number: 88499463
Internet Transmission Date: Tue Nov 05 09:34:56 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201911050934564039
81-88499463-70063f6a9129294814e86c37c0ff
1c1ee9fb6de67bdc3b2e7c5d46554782c5f7a-N/
A-N/A-20191105093155153030