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. 88638653 G-12 EVO(Standard Characters, see http://uspto.report/TM/88638653/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant notes that the examining attorney has objected to the registration of Applicant’s G-12 EVO mark based on a perceived likelihood of confusion with U.S. Reg. No. 4985896. Applicant has amended its description of goods and has deleted out “chemicals used in automotive industry, namely, heat transfer fluids for automotive use, preparations for corrosion prevention, and preparations for the prevention of overheating and freezing of metals.” These were the only goods that the examining attorney cited as relevant goods. Because the goods at issue are no longer part of Applicant’s application, it respectfully asks the examining attorney to withdraw her refusal under Section 2(d).

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Antifreeze preparations for use in connection with motor vehicles; coolants for vehicle engines; chemicals used in automotive industry, namely, heat transfer fluids for automotive use, preparations for corrosion prevention, and preparations for the prevention of overheating and freezing of metals
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: Antifreeze preparations for use in connection with motor vehicles; coolants for vehicle engines; chemicals used in automotive industry, namely, heat transfer fluids for automotive use, preparations for corrosion prevention, and preparations for the prevention of overheating and freezing of metalsClass 001 for Antifreeze preparations for use in connection with motor vehicles; coolants for vehicle engines
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: Valvoline Licensing and Intellectual Property LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      100 Valvoline Way
      Lexington, Kentucky 40509
      United States

Proposed: Valvoline Licensing and Intellectual Property LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      100 Valvoline Way
      Lexington, Kentucky 40509
      United States
      Email Address: XXXX
Correspondence Information (current):
      Julie R. Fenstermaker
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@beneschlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 47075-00094.
Correspondence Information (proposed):
      Julie R. Fenstermaker
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@beneschlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 47075-00094.

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: /Julie R. Fenstermaker/     Date: 06/29/2020
Signatory's Name: Julie R. Fenstermaker
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 216-363-4466

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:    Julie R. Fenstermaker
   Benesch, Friedlander, Coplan & Aronoff LLP
   Suite 2300
   200 Public Square
   Cleveland, Ohio 44114
Mailing Address:    Julie R. Fenstermaker
   Benesch, Friedlander, Coplan & Aronoff LLP
   Suite 2300
   200 Public Square
   Cleveland, Ohio 44114
        
Serial Number: 88638653
Internet Transmission Date: Mon Jun 29 15:18:01 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202006291518017706
47-88638653-710363edda465347dc8dfbff914b
ecd4237c42de2ebe45aaf3a5bbfb10f2bbe52-N/
A-N/A-20200629151711246531