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. 88680755 DOMINION(Standard Characters, see http://uspto.report/TM/88680755/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for Machine parts, namely, ball bearings, double row ball bearings, cylindrical roller bearings, spherical thrust bearings, roller bearings, ball bearing inserts, spherical bearings, needle bearings, plain spherical bearings, ball bearing adapters, self-aligning ball bearings, thrust ball bearings, angular contact ball bearings, needle bearings, thrust needle bearings, thrust roller bearings, tapered roller bearings, journal bearings, linear bearings, linear shafting, magneto ball bearings, mounted ball bearings, mounted roller bearings, bearing heaters, bearing pullers, and all other types of anti-friction bearings, namely, stud type cam follower bearings, yoke type cam follower bearings, single row ball bearings, cartridge ball bearings, deep groove ball bearings, insert ball bearings, mast guide ball bearings, steel balls, unground ball bearings, ball and needle combination bearings, ball and roller combination bearings, needle and roller combination bearings, flange ball bearings, plain flange bearings, roller flange bearings, hanger ball bearings, plain hanger bearings, roller hanger bearings, linear ball bearings, plain linear bearings, rail linear bearings, roller linear bearings, shafting linear bearings, rod end plain bearings, insert roller bearings, needle roller bearings, spherical roller bearings, slewing ring ball bearings, slewing ring roller bearings, take-up ball bearings, take-up frame bearings, plain take-up bearings, take-up roller bearings, pillow blocks ball bearings, plain pillow blocks bearings, pillow blocks roller bearings; and rod ends for use in industrial machines, namely, mining, sawmills, and pulp and paper machinery; machine parts, namely, pillow blocks and flange blocks; machine parts; parts for machines; power transmission parts for machines; bearing adapter mounting sleeves, bearing removal sleeves; plummer blocks, stabilizing rings, seal rings; keyless bushings, QD bushings, taper lock bushings; roller chain; chain couplings, coupling elements, geared couplings, coupling hubs, jaw couplings, rigid couplings; lip seals; plain bore sheaves, QD sheaves, taper lock sheaves, variable pitch sheaves; plain bore sprockets, QD sprockets, taper lock sprockets
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: Machine parts, namely, ball bearings, double row ball bearings, cylindrical roller bearings, spherical thrust bearings, roller bearings, ball bearing inserts, spherical bearings, needle bearings, plain spherical bearings, ball bearing adapters, self-aligning ball bearings, thrust ball bearings, angular contact ball bearings, needle bearings, thrust needle bearings, thrust roller bearings, tapered roller bearings, journal bearings, linear bearings, linear shafting, magneto ball bearings, mounted ball bearings, mounted roller bearings, bearing heaters, bearing pullers, and all other types of anti-friction bearings, namely, stud type cam follower bearings, yoke type cam follower bearings, single row ball bearings, cartridge ball bearings, deep groove ball bearings, insert ball bearings, mast guide ball bearings, steel balls, unground ball bearings, ball and needle combination bearings, ball and roller combination bearings, needle and roller combination bearings, flange ball bearings, plain flange bearings, roller flange bearings, hanger ball bearings, plain hanger bearings, roller hanger bearings, linear ball bearings, plain linear bearings, rail linear bearings, roller linear bearings, shafting linear bearings, rod end plain bearings, insert roller bearings, needle roller bearings, spherical roller bearings, slewing ring ball bearings, slewing ring roller bearings, take-up ball bearings, take-up frame bearings, plain take-up bearings, take-up roller bearings, pillow blocks ball bearings, plain pillow blocks bearings, pillow blocks roller bearings; Machine parts, namely, ball bearings, double row ball bearings, cylindrical roller bearings, spherical thrust bearings, roller bearings, ball bearing inserts, spherical bearings, plain spherical bearings, ball bearing adapters, self-aligning ball bearings, thrust ball bearings, angular contact ball bearings, needle bearings, thrust needle bearings, thrust roller bearings, tapered roller bearings, journal bearings, linear bearings, linear shafting for ball bearings, magneto ball bearings, mounted ball bearings, mounted roller bearings, and all other types of anti-friction bearings, namely, stud type cam follower bearings, yoke type cam follower bearings, single row ball bearings, cartridge ball bearings, deep groove ball bearings, insert ball bearings, mast guide ball bearings, unground ball bearings, ball and needle combination bearings, ball and roller combination bearings, needle and roller combination bearings, flange ball bearings, plain flange bearings, roller flange bearings, hanger ball bearings, plain hanger bearings, roller hanger bearings, linear ball bearings, plain linear bearings, rail linear bearings, roller linear bearings, shafting linear bearings, rod end plain bearings, insert roller bearings, needle roller bearings, spherical roller bearings, slewing ring ball bearings, slewing ring roller bearings, take-up ball bearings, take-up frame bearings, plain take-up bearings, take-up roller bearings, pillow blocks ball bearings, plain pillow blocks bearings, pillow blocks roller bearings; and rod ends for use in industrial machines, namely, mining, sawmills, and pulp and paper machinery; machine parts, namely, bearing rod ends for use in industrial machines and machinery; machine parts, namely, pillow blocks and flange blocks; machine parts; machine parts, namely, bearing adapter mounting sleeves, bearing removal sleeves; parts for machines; machine parts, namely, plummer blocks for bearings, bearing stabilizing rings, seal rings for bearings; power transmission parts for machines; seals for bearings; bearing adapter mounting sleeves, bearing removal sleeves; mechanical seals, namely, lip seals; plummer blocks, stabilizing rings, seal rings; keyless bushings, QD bushings, taper lock bushings for use as parts of machines; keyless bushings, QD bushings, taper lock bushings; roller chain being parts of machines; roller chain; chain couplings, coupling elements, geared couplings, coupling hubs, jaw couplings, rigid couplings, all for machines; chain couplings, coupling elements, geared couplings, coupling hubs, jaw couplings, rigid couplings; lip seals as machine components; lip seals; machine parts, namely, plain bore sheaves, QD sheaves, taper lock sheaves, variable pitch sheaves; plain bore sheaves, QD sheaves, taper lock sheaves, variable pitch sheaves; machinery timing components, namely, plain bore sprockets, QD sprockets, taper lock sprockets.; plain bore sprockets, QD sprockets, taper lock sprocketsClass 007 for Machine parts, namely, ball bearings, double row ball bearings, cylindrical roller bearings, spherical thrust bearings, roller bearings, ball bearing inserts, spherical bearings, plain spherical bearings, ball bearing adapters, self-aligning ball bearings, thrust ball bearings, angular contact ball bearings, needle bearings, thrust needle bearings, thrust roller bearings, tapered roller bearings, journal bearings, linear bearings, linear shafting for ball bearings, magneto ball bearings, mounted ball bearings, mounted roller bearings, and all other types of anti-friction bearings, namely, stud type cam follower bearings, yoke type cam follower bearings, single row ball bearings, cartridge ball bearings, deep groove ball bearings, insert ball bearings, mast guide ball bearings, unground ball bearings, ball and needle combination bearings, ball and roller combination bearings, needle and roller combination bearings, flange ball bearings, plain flange bearings, roller flange bearings, hanger ball bearings, plain hanger bearings, roller hanger bearings, linear ball bearings, plain linear bearings, rail linear bearings, roller linear bearings, shafting linear bearings, rod end plain bearings, insert roller bearings, needle roller bearings, spherical roller bearings, slewing ring ball bearings, slewing ring roller bearings, take-up ball bearings, take-up frame bearings, plain take-up bearings, take-up roller bearings, pillow blocks ball bearings, plain pillow blocks bearings, pillow blocks roller bearings; machine parts, namely, bearing rod ends for use in industrial machines and machinery; machine parts, namely, pillow blocks and flange blocks; machine parts, namely, bearing adapter mounting sleeves, bearing removal sleeves; machine parts, namely, plummer blocks for bearings, bearing stabilizing rings, seal rings for bearings; seals for bearings; mechanical seals, namely, lip seals; keyless bushings, QD bushings, taper lock bushings for use as parts of machines; roller chain being parts of machines; chain couplings, coupling elements, geared couplings, coupling hubs, jaw couplings, rigid couplings, all for machines; lip seals as machine components; machine parts, namely, plain bore sheaves, QD sheaves, taper lock sheaves, variable pitch sheaves; machinery timing components, namely, plain bore sprockets, QD sprockets, taper lock sprockets.
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: Royal Bearing, Inc., a corporation of Oregon, having an address of
      17719 NE Sandy Boulevard
      Portland, Oregon 97230
      United States

Proposed: Royal Bearing, Inc., a corporation of Oregon, having an address of
      17719 NE Sandy Boulevard
      Portland, Oregon 97230
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
With reference to the requirement to clarify the term "coupling elements." "Coupling element" is the common, commercial name for a specific kind of coupling. A "coupling element" is a coupling that features elastomeric or polyurethane housing that allows for flex under high loads. Please contact the undersigned if examples or visual evidence of coupling elements manufactured by third parties would be useful in addressing this matter.

Correspondence Information (current):
      MATTHEW R. WILMOT
      PRIMARY EMAIL FOR CORRESPONDENCE: TM-PDX@STOEL.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 39167-9.
Correspondence Information (proposed):
      Matthew R. Wilmot
      PRIMARY EMAIL FOR CORRESPONDENCE: TM-PDX@STOEL.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): patrick.hartigan@stoel.com

The docket/reference number is 39167-9.

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: /Matthew R. Wilmot/     Date: 08/11/2020
Signatory's Name: Matthew R. Wilmot
Signatory's Position: Attorney of record, Oregon Bar member

Signatory's Phone Number: 503-294-9851

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:    MATTHEW R. WILMOT
   STOEL RIVES LLP
   
   760 SW NINTH AVENUE, SUITE 3000
   PORTLAND, Oregon 97205
Mailing Address:    Matthew R. Wilmot
   STOEL RIVES LLP
   760 SW NINTH AVENUE, SUITE 3000
   PORTLAND, Oregon 97205
        
Serial Number: 88680755
Internet Transmission Date: Tue Aug 11 22:49:23 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020081122492367
0583-88680755-74073612fd5adf4948b223b72e
d845767b988ff591df2723798253e552bc9fb3e3
-N/A-N/A-20200811184804272570