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. 88503532 NAC(Standard Characters, see http://uspto.report/TM/88503532/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 019 for Flooring underlayment; flooring underlayment, namely, crack isolation membranes; flooring membranes, namely, flooring underlayment; waterproofing membranes for buildings; waterproofing membranes for floors; waterproofing membranes in liquid chemical form for use in construction; acoustic membranes; concrete sealers in the form of a coating; self-adhering ceramic tile, quarry tiles, stone tiles, vinyl tiles, wood tiles, cork tiles and composite non-metal tiles; self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces; sound control membranes; sound abatement membrane; self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection; elastomeric waterproofing membrane which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring; primers for membrane system; chemical floor hardener for porous, cementitious substrates; pre-formed corners for use in waterproofing; seam tape can be used for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions; tile installation kits; waterproofing kit
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: Flooring underlayment; flooring underlayment, namely, crack isolation membranes; flooring membranes, namely, flooring underlayment; waterproofing membranes for buildings; waterproofing membranes for roofing, floors and walls; waterproofing membranes for floors; waterproofing membranes in liquid chemical form for use in construction; self-adhering ceramic tile, quarry tiles, stone tiles, vinyl tiles, wood tiles, cork tiles and composite non-metal tiles; acoustic membranes; flooring underlayment, namely, self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces; concrete sealers in the form of a coating; flooring underlayment, namely, self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection; elastomeric waterproofing membrane for floors which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring; self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces; waterproofing membranes in the shape of pre-formed corners for roofing, floors and walls; sound control membranes; building seam tape for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions; sound abatement membrane; tile installation kits comprised of non-metal tiles, primer, primer brush, and utility knife; self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection; waterproofing kit comprised of waterproofing membrane for floors and walls, building seam tape, primer, and polyurethane sealant; elastomeric waterproofing membrane which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring; primers for membrane system; chemical floor hardener for porous, cementitious substrates; pre-formed corners for use in waterproofing; seam tape can be used for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions; tile installation kits; waterproofing kitClass 019 for Flooring underlayment; flooring underlayment, namely, crack isolation membranes; flooring membranes, namely, flooring underlayment; waterproofing membranes for roofing, floors and walls; waterproofing membranes for floors; self-adhering ceramic tile, quarry tiles, stone tiles, vinyl tiles, wood tiles, cork tiles and composite non-metal tiles; flooring underlayment, namely, self-bonding, sheet applied, elastomeric membrane designed for use under floor surfaces; flooring underlayment, namely, self-bonding, elastomeric sheet applied membrane designed for use under interior or exterior floor surfaces that require waterproof protection; elastomeric waterproofing membrane for floors which also functions as a sealant, stand-alone crack suppressant and moisture barrier for interior and exterior applications of hard surface, resilient and wood flooring; waterproofing membranes in the shape of pre-formed corners for roofing, floors and walls; building seam tape for interior and exterior applications to waterproof seams, joints, shower curbs, drains, exterior decks and balconies and other protrusions; tile installation kits comprised of non-metal tiles, primer, primer brush, and utility knife; waterproofing kit comprised of waterproofing membrane for floors and walls, building seam tape, primer, and polyurethane sealant
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 001 for Waterproofing membranes in liquid chemical form for use in construction; adhesive primers for membrane systems for use in the construction industry
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 002 for Concrete sealers in the form of a coating; chemical floor hardener for porous, cementitious substrates, namely, coatings in the nature of industrial sealants for waterproofing and surface hardening
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Acoustic membranes; sound control membranes in the nature of acoustic membranes; sound abatement membranes in the nature of acoustic membranes
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 017 for Waterproofing membranes for foundations of buildings; sound control membranes in the nature of sound absorbing flooring underlayment; sound abatement membranes in the nature of sound absorbing flooring underlayment
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: NATIONAL APPLIED CONSTRUCTION PRODUCTS, INC., a corporation of Ohio, having an address of
      3800 East 91st Street
      Cleveland, Ohio 44105
      United States

Proposed: NATIONAL APPLIED CONSTRUCTION PRODUCTS, INC., a corporation of Ohio, having an address of
      3800 East 91st Street
      Cleveland, Ohio 44105
      United States
      Email Address: TMOwner@faysharpe.com
Correspondence Information (current):
      Brian E. Turung
      PRIMARY EMAIL FOR CORRESPONDENCE: uspto@faysharpe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is GARI 500216U.
Correspondence Information (proposed):
      Brian E. Turung
      PRIMARY EMAIL FOR CORRESPONDENCE: uspto@faysharpe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bturung@faysharpe.com; mrohan@faysharpe.com

The docket/reference number is GARI 500216U.

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).

FEE(S)
Fee(s) in the amount of $1100 is being submitted.

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: /bet/      Date: 03/09/2020
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of record/Ohio bar member
Signatory's Phone Number: 216-363-9000


Response Signature
Signature: /bet/     Date: 03/09/2020
Signatory's Name: Brian E. Turung
Signatory's Position: Attorney of Record/Ohio bar member

Signatory's Phone Number: 216-363-9000

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:    Brian E. Turung
   FAY SHARPE LLP
   
   1228 EUCLID AVENUE
   CLEVELAND, Ohio 44115
Mailing Address:    Brian E. Turung
   FAY SHARPE LLP
   1228 EUCLID AVENUE
   CLEVELAND, Ohio 44115
        
RAM Sale Number: 88503532
RAM Accounting Date: 03/09/2020
        
Serial Number: 88503532
Internet Transmission Date: Mon Mar 09 14:09:58 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020030914095851
7699-88503532-710b59b17ff6c8f7da0f06e257
8eeb5d4ea6871de84cdf7610ff1c2a3acd4d1c7-
CC-09570687-20200309140356382607