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 |
88580803 |
LAW OFFICE ASSIGNED |
LAW OFFICE 112 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88580803/mark.png |
LITERAL ELEMENT |
SL MINING |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the term "SL MINING" and Design. |
ARGUMENT(S) |
In the Office Action dated November 16, 2019, the Examining Attorney raised five informalities.
First, the Examining Attorney inquired whether the term "SL" has any meaning or significance in the industry in which the goods and services are manufactured/provided, any meaning or
significance as applied to the client's goods and/or services, or if such wording is a term of art within the client's industry. Applicant submits that, to the best of its knowledge, SL is not term
of art within the client's industry, does not have any meaning or significance in the industry in which the goods and services are manufactured/provided, and does not have any meaning or significance
as applied to Applicant’s goods and/or services, except as Applicant’s trademark/service mark.
Second, the Examining Attorney requested a disclaim the term MINING. Applicant has made such a disclaimer of record.
Third, the Examining Attorney requested amendments to the goods in Class 6. Accordingly, Applicant has amended its goods as suggested by the Examining Attorney and in accordance with the USPTO’s
Acceptable Identification of Goods Manual.
Fourth, the Examining Attorney indicated that Applicant must make of record a complete description of the mark. Accordingly, Applicant has
made of record the description suggested by the Examining Attorney.
Fifth, the Examining Attorney inquired if Applicant intends to rely on both its bona fide intention to use the mark in U.S. commerce and its foreign registration or just one of these
bases. Applicant submits that, for now, it intends to rely on both bases. Applicant submits herewith a copy of its foreign registration, perfecting its Section 44(e) basis.
Applicant submits it has responded to all outstanding issues raised in the Office Action. The Examining Attorney is encouraged to contact the undersigned if the Examining Attorney
has any questions or requires any additional information.
|
GOODS AND/OR SERVICES SECTION (006)(current) |
INTERNATIONAL CLASS |
006 |
DESCRIPTION |
Common metals and their alloys; metal ores; unprocessed and semi-processed materials of metal, not specified for use; common metals,
unwrought and semi-worked, for further manufacture; ferrous metals; non-ferrous metals; unwrought or semi-wrought copper, aluminum and alumina, tin, iron, steel, cobalt; non-electric cables and wires
of common metal; welding and soldering materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron ores |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
GOODS AND/OR SERVICES SECTION (006)(proposed) |
INTERNATIONAL CLASS |
006 |
TRACKED TEXT DESCRIPTION |
Common metals and their alloys; metal ores; unprocessed and semi-processed materials of metal, not specified for use; unprocessed and semi-processed materials of metal, in the nature of ores,
ingots, slabs, billets, blooms, bars and concentrates; common metals, unwrought and semi-worked, for further manufacture; ferrous metals;
non-ferrous metals; unwrought or semi-wrought copper, aluminum and alumina, tin, iron, steel, cobalt; unwrought or semi-wrought copper, aluminum, tin, iron, steel, cobalt ores; non-electric cables and wires of common metal; welding and
soldering materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron ores |
FINAL DESCRIPTION |
Common metals and their alloys; metal ores; unprocessed and semi-processed materials of metal, in the nature of ores, ingots, slabs,
billets, blooms, bars and concentrates; common metals, unwrought and semi-worked, for further manufacture; ferrous metals; non-ferrous metals; unwrought or semi-wrought copper, aluminum, tin, iron,
steel, cobalt ores; non-electric cables and wires of common metal; welding and soldering materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron
ores |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
18080183 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/25/2019 |
FOREIGN EXPIRATION DATE |
72/02/06/0 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-1732271968-152043167_._EM_reg_cert.pdf |
CONVERTED PDF FILE(S)
(7 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0005.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0007.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\885\808\88580803\xml7\ROA0008.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (036)(current) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
Financial services, namely, financial consultancy; commodity trading services for others; brokerage of hard commodities, namely,
metals, precious metals, and associated raw materials; trading of financial derivatives; financial risk management; investment risk assessment services; hedge fund management and investment services;
valuation of precious metals; safe deposit services for precious metals; information, advisory and consultancy services relating to the aforesaid services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
GOODS AND/OR SERVICES SECTION (036)(proposed) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
Financial services, namely, financial consultancy; commodity trading services for others; brokerage of hard commodities, namely,
metals, precious metals, and associated raw materials; trading of financial derivatives; financial risk management; investment risk assessment services; hedge fund management and investment services;
valuation of precious metals; safe deposit services for precious metals; information, advisory and consultancy services relating to the aforesaid services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
18080183 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/25/2019 |
FOREIGN EXPIRATION DATE |
06/07/2029 |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (037)(current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Extraction of natural resources, namely, mining, drilling, excavating, and quarrying services; mining of metal, precious metals and
associated raw materials; information, advisory and consultancy services relating to the aforesaid services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
GOODS AND/OR SERVICES SECTION (037)(proposed) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Extraction of natural resources, namely, mining, drilling, excavating, and quarrying services; mining of metal, precious metals and
associated raw materials; information, advisory and consultancy services relating to the aforesaid services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080183 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/07/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
18080183 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/25/2019 |
FOREIGN EXPIRATION DATE |
06/07/2029 |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
ADDITIONAL STATEMENTS SECTION |
DISCLAIMER |
No claim is made to the exclusive right to use MINING apart from the mark as shown. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the wording SL MINING next to a design of the map of Africa shown with lines. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
RESPONSE SIGNATURE |
/SRH/ |
SIGNATORY'S NAME |
Stacey Halpern |
SIGNATORY'S POSITION |
Attorney for Applicant, California bar member |
SIGNATORY'S PHONE NUMBER |
949-760-0404 |
DATE SIGNED |
12/09/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Dec 09 16:33:02 EST 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XX.XX-2
0191209163302530007-88580
803-700e5548ea07d5d6ae0e5
2c98fbce39bfbf716b93256b8
1ef777c1a428daefdaf7-N/A-
N/A-20191209152043167409 |
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.
88580803 SL MINING (Stylized and/or with Design, see http://uspto.report/TM/88580803/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In the Office Action dated November 16, 2019, the Examining Attorney raised five informalities.
First, the Examining Attorney inquired whether the term "SL" has any meaning or significance in the industry in which the goods and services are manufactured/provided, any meaning or
significance as applied to the client's goods and/or services, or if such wording is a term of art within the client's industry. Applicant submits that, to the best of its knowledge, SL is not term
of art within the client's industry, does not have any meaning or significance in the industry in which the goods and services are manufactured/provided, and does not have any meaning or significance
as applied to Applicant’s goods and/or services, except as Applicant’s trademark/service mark.
Second, the Examining Attorney requested a disclaim the term MINING. Applicant has made such a disclaimer of record.
Third, the Examining Attorney requested amendments to the goods in Class 6. Accordingly, Applicant has amended its goods as suggested by the Examining Attorney and in accordance with the USPTO’s
Acceptable Identification of Goods Manual.
Fourth, the Examining Attorney indicated that Applicant must make of record a complete description of the mark. Accordingly, Applicant has
made of record the description suggested by the Examining Attorney.
Fifth, the Examining Attorney inquired if Applicant intends to rely on both its bona fide intention to use the mark in U.S. commerce and its foreign registration or just one of these
bases. Applicant submits that, for now, it intends to rely on both bases. Applicant submits herewith a copy of its foreign registration, perfecting its Section 44(e) basis.
Applicant submits it has responded to all outstanding issues raised in the Office Action. The Examining Attorney is encouraged to contact the undersigned if the Examining Attorney
has any questions or requires any additional information.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Common metals and their alloys; metal ores; unprocessed and semi-processed materials of metal, not specified for use; common metals, unwrought and semi-worked, for
further manufacture; ferrous metals; non-ferrous metals; unwrought or semi-wrought copper, aluminum and alumina, tin, iron, steel, cobalt; non-electric cables and wires of common metal; welding and
soldering materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron ores
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18080183 filed 06/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Common metals and their alloys;
metal ores;
unprocessed and semi-processed
materials of metal, not specified for use;
unprocessed and semi-processed materials of metal, in the nature of ores, ingots, slabs, billets, blooms, bars and
concentrates;
common metals, unwrought and semi-worked, for further manufacture;
ferrous metals;
non-ferrous
metals;
unwrought or semi-wrought copper, aluminum and alumina, tin, iron, steel, cobalt;
unwrought or semi-wrought
copper, aluminum, tin, iron, steel, cobalt ores;
non-electric cables and wires of common metal;
welding and soldering materials, namely, metal
welding rods and welding wire;
metal containers for storage or transport;
iron oresClass 006 for Common metals and their alloys; metal
ores; unprocessed and semi-processed materials of metal, in the nature of ores, ingots, slabs, billets, blooms, bars and concentrates; common metals, unwrought and semi-worked, for further
manufacture; ferrous metals; non-ferrous metals; unwrought or semi-wrought copper, aluminum, tin, iron, steel, cobalt ores; non-electric cables and wires of common metal; welding and soldering
materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron ores
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18080183 filed
06/07/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 18080183
registered 10/25/2019 with a renewal date of __________ and an expiration date of 72/02/06/0 ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1732271968-152043167_._EM_reg_cert.pdf
Converted PDF file(s) ( 7 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial services, namely, financial consultancy; commodity trading services for others; brokerage of hard commodities, namely, metals, precious metals, and associated
raw materials; trading of financial derivatives; financial risk management; investment risk assessment services; hedge fund management and investment services; valuation of precious metals; safe
deposit services for precious metals; information, advisory and consultancy services relating to the aforesaid services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18080183 filed 06/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed: Class 036 for Financial services, namely, financial consultancy; commodity trading services for others; brokerage of hard commodities, namely, metals, precious metals, and associated
raw materials; trading of financial derivatives; financial risk management; investment risk assessment services; hedge fund management and investment services; valuation of precious metals; safe
deposit services for precious metals; information, advisory and consultancy services relating to the aforesaid services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18080183 filed
06/07/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 18080183
registered 10/25/2019 with a renewal date of __________ and an expiration date of 06/07/2029 ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Extraction of natural resources, namely, mining, drilling, excavating, and quarrying services; mining of metal, precious metals and associated raw materials;
information, advisory and consultancy services relating to the aforesaid services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18080183 filed 06/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed: Class 037 for Extraction of natural resources, namely, mining, drilling, excavating, and quarrying services; mining of metal, precious metals and associated raw materials;
information, advisory and consultancy services relating to the aforesaid services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18080183 filed
06/07/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 18080183
registered 10/25/2019 with a renewal date of __________ and an expiration date of 06/07/2029 ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MINING apart from the mark as shown.
Description of mark
The mark consists of the wording SL MINING next to a design of the map of Africa shown with lines.
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the
Trademark Rules of Practice.
Response Signature
Signature: /SRH/ Date: 12/09/2019
Signatory's Name: Stacey Halpern
Signatory's Position: Attorney for Applicant, California bar member
Signatory's Phone Number: 949-760-0404
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.
Serial Number: 88580803
Internet Transmission Date: Mon Dec 09 16:33:02 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019120916330253
0007-88580803-700e5548ea07d5d6ae0e52c98f
bce39bfbf716b93256b81ef777c1a428daefdaf7
-N/A-N/A-20191209152043167409