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)

---

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. 88499536 UNIVERSITY PRODUCTS THINKING IN & OUT OF THE BOX SINCE 1968 (Stylized and/or with Design, see http://uspto.report/TM/88499536/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: UNIVERSITY PRODUCTS THINKING IN & OUT OF THE BOX SINCE 1968 (Stylized and/or with Design, see http://uspto.report/TM/88499536/mark.png)
Proposed: UNIVERSITY PRODUCTS THINKING IN & OUT OF THE BOX SINCE 1968 (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of an open box image with four sides of a box and two front sides cut away with the words "UNIVERSITY" in bold uppercase font above the word "PRODUCTS" in uppercase font with the words "THINKING IN & OUT OF THE BOX SINCE 1968" in small uppercase font.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for wholesale distributorship, mail order and telephone order services in the fields of book processing materials, book maintenance and storage, library skills and visual aids, sign making and display boards, audio-visual equipment and supplies, microfiche/microfilm storage, general office supplies, computer supplies and equipment, office and library furniture, and archival supplies and materials

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for paper products and stationery; namely, catalog cards; book cards and pockets; library forms; paper and plastic book jacket/paperback/magazine/pamphlet covers; book tapes and book repair kits comprised primarily of book tapes, mending tapes, book wings and corners, and book cleaners; dictionaries, management books, display boards, pads and easels, sign making kits comprised primarily of sign boards, easels, vinyl letters and pens; and printed signs; office supplies; namely, notepads, pens and pencils, staplers, pencil sharpeners, paper cutters; and computer stationery and forms; archival supplies and materials; namely, acid-free archival quality document cases, storage boxes and cartons, unbuffered and buffered acid-free tissue paper, acid-free and lignin-free file/expansion/manuscript folders, document preservation binders/folders, transparent archival plastic sheet protectors, sleeves, envelopes and folders, double coated transparent tape, archival photo/memorabilia albums and mounting board and buffered bond paper
Original Filing Basis:
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 09/01/1982 and first used in commerce at least as early as 09/01/1982 , and is now in use in such commerce.

Proposed:
Tracked Text Description: paper products and stationery; Stationery, namely, catalog cards, book cards and pockets, book, document, magazine and pamphlet cartons, cases, covers and storage boxes, notepads and tissue paper; namely, catalog cards; book binding and repairing materials; book cards and pockets; dictionaries; library forms; easels; paper and plastic book jacket/paperback/magazine/pamphlet covers; blank, business and printed forms; book tapes and book repair kits comprised primarily of book tapes, mending tapes, book wings and corners, and book cleaners; paper display boxes; dictionaries, management books, display boards, pads and easels, sign making kits comprised primarily of sign boards, easels, vinyl letters and pens; sign making kits comprised primarily of cardboard, paper, vinyl letters and pens; and printed signs; printed paper signs; office supplies; pens and pencils; namely, notepads, pens and pencils, staplers, pencil sharpeners, paper cutters; staplers; and computer stationery and forms; pencil sharpeners; archival supplies and materials; paper cutters for office use; namely, acid-free archival quality document cases, storage boxes and cartons, unbuffered and buffered acid-free tissue paper, acid-free and lignin-free file/expansion/manuscript folders, document preservation binders/folders, transparent archival plastic sheet protectors, sleeves, envelopes and folders, double coated transparent tape, archival photo/memorabilia albums and mounting board and buffered bond paper; archival storage pages; document holders; corrugated record storage boxes; file boxes for storage of magazines, business and personal records; boxes, cartons and storage containers made of paper or cardboard; binders; folders; protective covers for sheets of paper and pages of books and the like; envelopes; adhesive tapes for stationery or household purposes; albums for memorabilia and photographs; mounting boards; buffered bond paperClass 016 for Stationery, namely, catalog cards, book cards and pockets, book, document, magazine and pamphlet cartons, cases, covers and storage boxes, notepads and tissue paper; book binding and repairing materials; dictionaries; easels; blank, business and printed forms; paper display boxes; sign making kits comprised primarily of cardboard, paper, vinyl letters and pens; printed paper signs; pens and pencils; staplers; pencil sharpeners; paper cutters for office use; archival storage pages; document holders; corrugated record storage boxes; file boxes for storage of magazines, business and personal records; boxes, cartons and storage containers made of paper or cardboard; binders; folders; protective covers for sheets of paper and pages of books and the like; envelopes; adhesive tapes for stationery or household purposes; albums for memorabilia and photographs; mounting boards; buffered bond paper
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 09/01/1982 and first used in commerce at least as early as 09/01/1982 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 016 . The specimen(s) submitted consists of Scanned image of a portion of a catalog .
"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:
SPU0-50252238101-20191018112431266199_._Specimen_Uni_Products_nw.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 042 ) for Wholesale distributorship, mail order and telephone ordering services in the fields of equipment and supplies for books, book maintenance and storage, library's, sign making, display boards, audio-visual apparatus, microfiche and microfilm storage, offices, computer apparatus, office and library furniture, and archival needs
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 09/01/1982 and first used in commerce at least as early as 09/01/1982 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of Scanned image of a portion of a catalog .
"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:
SPU1-50252238101-20191018112431266199_._Specimen_Uni_Products_nw.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

The applicant's current attorney information: Deborah A. Basile. Deborah A. Basile of DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C., is located at

      ONE MONARCH PLACE, SUITE 1900
      1414 MAIN STREET
      SPRINGFIELD, Massachusetts 01144
      US

The phone number is 413-733-3111.

The fax number is 413-734-3910.

The email address is dbasile@dwpm.com

The applicants proposed attorney information: Deborah A. Basile. Deborah A. Basile of DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ONE MONARCH PLACE, SUITE 1900
      1414 MAIN STREET
      SPRINGFIELD, Massachusetts 01144
      United States

The phone number is 413-733-3111.

The fax number is 413-734-3910.

The email address is dbasile@dwpm.com

Deborah A. Basile 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: DEBORAH A. BASILE. DEBORAH A. BASILE of DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C., is located at

      ONE MONARCH PLACE, SUITE 1900
      1414 MAIN STREET
      SPRINGFIELD, Massachusetts 01144
      US

The phone number is 413-733-3111.

The fax number is 413-734-3910.

The email address is dbasile@dwpm.com

The applicants proposed correspondence information: Deborah A. Basile. Deborah A. Basile of DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C., is located at

      ONE MONARCH PLACE, SUITE 1900
      1414 MAIN STREET
      SPRINGFIELD, Massachusetts 01144
      United States

The phone number is 413-733-3111.

The fax number is 413-734-3910.

The email address is dbasile@dwpm.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "PRODUCTS" and "SINCE 1968" apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 1685278 and 2608536.


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: /Deborah A. Basile/      Date: 10/18/2019
Signatory's Name: Deborah A. Basile
Signatory's Position: Attorney of Record, Massachusetts Bar member
Signatory's Phone Number: 413-733-3111


Response Signature
Signature: /Deborah A. Basile/     Date: 10/18/2019
Signatory's Name: Deborah A. Basile
Signatory's Position: Attorney of Record, Massachusetts Bar member

Signatory's Phone Number: 413-733-3111

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:    DEBORAH A. BASILE
   DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C.
   ONE MONARCH PLACE, SUITE 1900
   1414 MAIN STREET
   SPRINGFIELD, Massachusetts 01144
Mailing Address:    Deborah A. Basile
   DOHERTY, WALLACE, PILLSBURY & MURPHY, P.C.
   ONE MONARCH PLACE, SUITE 1900
   1414 MAIN STREET
   SPRINGFIELD, Massachusetts 01144
        
Serial Number: 88499536
Internet Transmission Date: Fri Oct 18 12:11:18 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910181211180
59979-88499536-61034fddff6f071c4d0d58b30
66e916d6491ecf39fa981a7a3bcf2e1debae874a
b-N/A-N/A-20191018112431266199