Response to Office Action

QUAKER HOUGHTON

Quaker Chemical Corporation

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88559641
LAW OFFICE ASSIGNED LAW OFFICE 104
MARK SECTION
MARK mark
LITERAL ELEMENT QUAKER HOUGHTON
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
OWNER SECTION (current)
NAME Quaker Chemical Corporation
INTERNAL ADDRESS Silverside Carr Executive Center
MAILING ADDRESS 501 Silverside Road
CITY Wilmington
STATE Delaware
ZIP/POSTAL CODE 19809-1374
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
OWNER SECTION (proposed)
NAME Quaker Chemical Corporation
INTERNAL ADDRESS Silverside Carr Executive Center
MAILING ADDRESS 501 Silverside Road
CITY Wilmington
STATE Delaware
ZIP/POSTAL CODE 19809-1374
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
EMAIL XXXX
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_20519620624-202004131 13409937218_._Response_to _USPTO_Office_Action_on_Q UAKER_HOUGHTON.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\885\596\88559641\xml1\ ROA0002.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\885\596\88559641\xml1\ ROA0003.JPG
       ORIGINAL PDF FILE evi_20519620624-202004131 13409937218_._KER_HOUGHTO N_and_QUAKER_HOUGHTON_CON NECT_-_Letter_of_Consent.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\885\596\88559641\xml1\ ROA0004.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\885\596\88559641\xml1\ ROA0005.JPG
DESCRIPTION OF EVIDENCE FILE Please see attached Response to Office Action and Letter of Consent
GOODS AND/OR SERVICES SECTION (001) (no change)
GOODS AND/OR SERVICES SECTION (002) (no change)
GOODS AND/OR SERVICES SECTION (003) (no change)
GOODS AND/OR SERVICES SECTION (004) (no change)
GOODS AND/OR SERVICES SECTION (035) (no change)
GOODS AND/OR SERVICES SECTION (040) (no change)
GOODS AND/OR SERVICES SECTION (041) (no change)
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Providing information regarding fluid cleaning, mixing and lubrication; monitoring and controlling fluid applications on site
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Providing information regarding fluid cleaning, mixing and lubrication; Providing technical information in the field of industrial fluid processing regarding fluid cleaning, mixing and lubrication; monitoring and controlling fluid applications on site; and monitoring and controlling fluid applications on-site
FINAL DESCRIPTION
Providing technical information in the field of industrial fluid processing regarding fluid cleaning, mixing and lubrication; and monitoring and controlling fluid applications on-site
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (045) (no change)
ATTORNEY INFORMATION (current)
NAME Rebecca E. McDougall
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME MORGAN, LEWIS & BOCKIUS LLP
INTERNAL ADDRESS ATTN: TMSU
STREET 1111 PENNSYLVANIA AVENUE, NW
CITY WASHINGTON
STATE District of Columbia
POSTAL CODE 20004
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 202-739-5385
FAX 202-739-3001
EMAIL trademarks@morganlewis.com
DOCKET/REFERENCE NUMBER 049531-0012
ATTORNEY INFORMATION (proposed)
NAME Rebecca E. McDougall
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME MORGAN, LEWIS & BOCKIUS LLP
INTERNAL ADDRESS ATTN: TMSU
STREET 1111 PENNSYLVANIA AVENUE, NW
CITY WASHINGTON
STATE District of Columbia
POSTAL CODE 20004
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 202-739-5385
FAX 202-739-3001
EMAIL trademarks@morganlewis.com
DOCKET/REFERENCE NUMBER 049531-0012
CORRESPONDENCE INFORMATION (current)
NAME REBECCA E. MCDOUGALL
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarks@morganlewis.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rebecca.mcdougall@morganlewis.com; seth.rappaport@morganlewis.com; michelle.raynes@morganlewis.com
DOCKET/REFERENCE NUMBER 049531-0012
CORRESPONDENCE INFORMATION (proposed)
NAME Rebecca E. McDougall
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarks@morganlewis.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rebecca.mcdougall@morganlewis.com; seth.rappaport@morganlewis.com; michelle.raynes@morganlewis.com
DOCKET/REFERENCE NUMBER 049531-0012
SIGNATURE SECTION
RESPONSE SIGNATURE /Seth Rappaport/
SIGNATORY'S NAME Seth A. Rappaport
SIGNATORY'S POSITION Attorney of record, DC, NY, and NJ bar member
SIGNATORY'S PHONE NUMBER 202-739-5564
DATE SIGNED 04/13/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Apr 13 11:42:43 ET 2020
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XX-
20200413114243379748-8855
9641-710e99cb1ff665b25ac3
dad567b6239fb11ea8b426c22
5d5958d4e44cf7ce-N/A-N/A-
20200413113409937218



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. 88559641 QUAKER HOUGHTON(Standard Characters, see http://uspto.report/TM/88559641/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: Please see attached Response to Office Action and Letter of Consent
Original PDF file:
evi_20519620624-202004131 13409937218_._Response_to _USPTO_Office_Action_on_Q UAKER_HOUGHTON.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_20519620624-202004131 13409937218_._KER_HOUGHTO N_and_QUAKER_HOUGHTON_CON NECT_-_Letter_of_Consent.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for Providing information regarding fluid cleaning, mixing and lubrication; monitoring and controlling fluid applications on site
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: Providing information regarding fluid cleaning, mixing and lubrication; Providing technical information in the field of industrial fluid processing regarding fluid cleaning, mixing and lubrication; monitoring and controlling fluid applications on site; and monitoring and controlling fluid applications on-siteClass 042 for Providing technical information in the field of industrial fluid processing regarding fluid cleaning, mixing and lubrication; and monitoring and controlling fluid applications on-site
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: Quaker Chemical Corporation, a corporation of Delaware, having an address of

            Silverside Carr Executive Center      501 Silverside Road
      Wilmington, Delaware 19809-1374
      United States

Proposed: Quaker Chemical Corporation, a corporation of Delaware, having an address of
      Silverside Carr Executive Center
      501 Silverside Road
      Wilmington, Delaware 19809-1374
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Rebecca E. McDougall. Rebecca E. McDougall of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 049531-0012.
      The phone number is 202-739-5385.
      The fax number is 202-739-3001.
      The email address is trademarks@morganlewis.com

The owner's/holder's proposed attorney information: Rebecca E. McDougall. Rebecca E. McDougall of MORGAN, LEWIS & BOCKIUS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ATTN: TMSU
      1111 PENNSYLVANIA AVENUE, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 049531-0012.
      The phone number is 202-739-5385.
      The fax number is 202-739-3001.
      The email address is trademarks@morganlewis.com

Rebecca E. McDougall 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):
      REBECCA E. MCDOUGALL
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rebecca.mcdougall@morganlewis.com; seth.rappaport@morganlewis.com; michelle.raynes@morganlewis.com

The docket/reference number is 049531-0012.
Correspondence Information (proposed):
      Rebecca E. McDougall
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rebecca.mcdougall@morganlewis.com; seth.rappaport@morganlewis.com; michelle.raynes@morganlewis.com

The docket/reference number is 049531-0012.

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)
Response Signature
Signature: /Seth Rappaport/     Date: 04/13/2020
Signatory's Name: Seth A. Rappaport
Signatory's Position: Attorney of record, DC, NY, and NJ bar member

Signatory's Phone Number: 202-739-5564

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:    REBECCA E. MCDOUGALL
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   1111 PENNSYLVANIA AVENUE, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Rebecca E. McDougall
   MORGAN, LEWIS & BOCKIUS LLP
   ATTN: TMSU
   1111 PENNSYLVANIA AVENUE, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88559641
Internet Transmission Date: Mon Apr 13 11:42:43 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202004131142433
79748-88559641-710e99cb1ff665b25ac3dad56
7b6239fb11ea8b426c225d5958d4e44cf7ce-N/A
-N/A-20200413113409937218


Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]


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