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 11/30/2023)

---

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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88683686 CAT (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8868368 6/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science; Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and paraticides; adhesives used in industry; cement for repairs, namely, adhesive cement for bonding; anti-freeze; coolants; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems; chemical preparations for locking screw threads; battery fluid, namely, acidulated water for recharging batteries; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins and diesel exhaust fluid
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: Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and parasiticides; unprocessed artificial resins, unprocessed plastics; adhesives used in industry; fire extinguishing and fire prevention compositions; cement for repairs, namely, adhesive cement for bonding; tempering and soldering preparations; anti-freeze; substances for tanning animal skins and hides; coolants; adhesives for use in industry; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems; putties and other paste fillers; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems; compost, manures, fertilizers; chemical preparations for locking screw threads; biological preparations for use in industry and science; battery fluid, namely, acidulated water for recharging batteries; Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and paraticides; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins and diesel exhaust fluidClass 001 for Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and parasiticides; adhesives used in industry; cement for repairs, namely, adhesive cement for bonding; anti-freeze; coolants; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems; chemical preparations for locking screw threads; battery fluid, namely, acidulated water for recharging batteries; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins and diesel exhaust fluid
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 proposes to amend the following:

Current:
Class 002 for Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art; Paints, varnishes, lacquers; preservatives against rust in the nature of a coating and against deterioration of wood; colorants; mordants used in the manufacturing of coatings; raw natural resins; primers, and paint thinners; metal preservatives in the nature of a coating; coatings in the form of paints for use in the manufacture of vehicles and on parts of vehicles; fireproof cement coatings
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: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; preservatives against rust in the nature of a coating and against deterioration of wood; colorants, dyes; colorants; inks for printing, marking and engraving; mordants used in the manufacturing of coatings; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art; primers, and paint thinners; Paints, varnishes, lacquers; metal preservatives in the nature of a coating; coatings in the form of paints for use in the manufacture of vehicles and on parts of vehicles; fireproof cement coatings; raw natural resinsClass 002 for Paints, varnishes, lacquers; preservatives against rust in the nature of a coating and against deterioration of wood; colorants; mordants used in the manufacturing of coatings; raw natural resins; primers, and paint thinners; metal preservatives in the nature of a coating; coatings in the form of paints for use in the manufacture of vehicles and on parts of vehicles; fireproof cement coatings
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 proposes to amend the following:

Current:
Class 004 for Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; Industrial oils and greases; lubricants; diesel oil; anti-seizure lubricating compounds for use on engines; lubricant designed for use in ball and roller bearings and bushings
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: Industrial oils and greases, wax; Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; diesel oil; fuels and illuminants; anti-seizure lubricating compounds for use on engines; candles and wicks for lighting; lubricant designed for use in ball and roller bearings and bushings; lubricantsClass 004 for Industrial oils and greases; lubricants; diesel oil; anti-seizure lubricating compounds for use on engines; lubricant designed for use in ball and roller bearings and bushings
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 proposes to amend the following:

Current:
Class 006 for Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes; Common metals and their alloys; metal building materials; ores; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; non-electric cables and wires of common metals; pipes and tubes of metal; metal plugs; metal sealing rings; metal seals; metal tie downs; metal bungs; metal caps for tubing ends; metal closures for containers; metal pipe collars; metal clamps; metal couplings for use with hoses; metal storage tanks; metal drain plugs; metal drawbar pins; metal locking pins; metal snap rings; metallic drain traps and drain caps; metal pipe extensions; metal debris deflectors; clad steel plates; metal track hardware, namely, track links, track shoes and track pins; metal chains; metal number plates; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts for land vehicles and machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty, metal hose clamps, and metal hose fittings; metal tool boxes; metal camshafts; metal studs; metal rod ends; metal rods; metal rivets; metal pins; metal brackets; metal clamps; metal bolts; metal nuts; metal washers; metal screws; metal fasteners; metal rings; metal belts; metal pulleys; metal springs; metal keys; metal Woodruff keys; metal clips; common metal powders used in manufacturing; metals in foil or powder form for 3D printers
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: Common metals and their alloys, ores; Common metals and their alloys; metal materials for building and construction; metal building materials; transportable buildings of metal; ores; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes; non-electric cables and wires of common metals; pipes and tubes of metal; metal plugs; metal sealing rings; non-electric cables and wires of common metal; metal seals; small items of metal hardware; metal tie downs; metal containers for storage or transport; metal bungs; metal caps for tubing ends; metal closures for containers; metal pipe collars; metal clamps; metal couplings for use with hoses; metal storage tanks; metal drain plugs; metal drawbar pins; metal locking pins; metal snap rings; metallic drain traps and drain caps; metal pipe extensions; metal debris deflectors; clad steel plates; metal track hardware, namely, track links, track shoes and track pins; metal chains; metal number plates; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts for land vehicles and machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty, metal hose clamps, and metal hose fittings; metal tool boxes; metal camshafts; metal studs; metal rod ends; metal rods; metal rivets; metal pins; metal brackets; metal clamps; metal bolts; metal nuts; metal hardware, namely, washers; metal screws; metal fasteners; metal rings; metal belts; metal hardware, namely, pulleys; metal hardware, namely, springs; metal washers; metal keys; metal Woodruff keys; metal clips; common metal powders used in manufacturing; metals in foil or powder form for 3D printers; metal pulleys; metal springsClass 006 for Common metals and their alloys; metal building materials; ores; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; non-electric cables and wires of common metals; pipes and tubes of metal; metal plugs; metal sealing rings; metal seals; metal tie downs; metal bungs; metal caps for tubing ends; metal closures for containers; metal pipe collars; metal clamps; metal couplings for use with hoses; metal storage tanks; metal drain plugs; metal drawbar pins; metal locking pins; metal snap rings; metallic drain traps and drain caps; metal pipe extensions; metal debris deflectors; clad steel plates; metal track hardware, namely, track links, track shoes and track pins; metal chains; metal number plates; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts for land vehicles and machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty, metal hose clamps, and metal hose fittings; metal tool boxes; metal camshafts; metal studs; metal rod ends; metal rods; metal rivets; metal pins; metal brackets; metal clamps; metal bolts; metal nuts; metal hardware, namely, washers; metal screws; metal fasteners; metal rings; metal belts; metal hardware, namely, pulleys; metal hardware, namely, springs; metal keys; metal Woodruff keys; metal clips; common metal powders used in manufacturing; metals in foil or powder form for 3D printers
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 proposes to amend the following:

Current:
Class 009 for Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus; Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; computers and computer peripheral devices; fire-extinguishing apparatus; computer software; electric wire, harnessing, gauges and switches; electronic displays; electronic connectors, terminals, and controls; circuit breakers; fuses; leveling rods; reflective mirrors to prevent accidents; power inverters; batteries; electrical parts and fittings for land vehicles, machinery, and equipment, namely, amplifiers for wireless communications, antennas, and batteries; electric relays; control mechanisms for machines, engines, or motors; fuel/air ratio controls for engines; speed governors for machines, engines, and motors; radios; antennas; electric cables; converters; speakers; glasses; eyeglasses; sunglasses; mobile phone and tablets; Solar panels for the production of electricity; drones
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: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; computers and computer peripheral devices; mechanisms for coin-operated apparatus; fire-extinguishing apparatus; cash registers, calculating devices; computer software; electric wire, harnessing, gauges and switches; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; electronic displays; electronic connectors, terminals, and controls; circuit breakers; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; fuses; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; leveling rods; computers and computer peripheral devices; reflective mirrors to prevent accidents; fire-extinguishing apparatus; power inverters; batteries; electrical parts and fittings for land vehicles, machinery, and equipment, namely, amplifiers for wireless communications, antennas, and batteries; electric relays; control mechanisms for machines, engines, or motors; fuel/air ratio controls for engines; speed governors for machines, engines, and motors; radios; antennas; electric cables; converters; speakers; glasses; eyeglasses; sunglasses; mobile phone and tablets; Solar panels for the production of electricity; dronesClass 009 for Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signaling, detecting, testing, inspecting apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; computers and computer peripheral devices; fire-extinguishing apparatus; computer software; electric wire, harnessing, gauges and switches; electronic displays; electronic connectors, terminals, and controls; circuit breakers; fuses; leveling rods; reflective mirrors to prevent accidents; power inverters; batteries; electrical parts and fittings for land vehicles, machinery, and equipment, namely, amplifiers for wireless communications, antennas, and batteries; electric relays; control mechanisms for machines, engines, or motors; fuel/air ratio controls for engines; speed governors for machines, engines, and motors; radios; antennas; electric cables; converters; speakers; glasses; eyeglasses; sunglasses; mobile phone and tablets; Solar panels for the production of electricity; drones
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 proposes to amend the following:

Current:
Class 011 for Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; Light lenses; machine head lights; interior lights; machine work lights; light, machine and lamp; light bulbs; head light bulbs; tail light bulbs; vehicle turn signal light bulbs; dashboard light bulbs; electric torches for lighting; lights for vehicles and lamps; reflectors for vehicles; air conditioning apparatus; air conditioning filters; defrosting apparatus for vehicles; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machinery, and earth moving machinery, namely, backup lights for land vehicles; coolant recovery systems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs; LED light bulbs; rear lights for vehicles; valves as part of radiators
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: Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; Light lenses; machine head lights; interior lights; machine work lights; light, machine and lamp; light bulbs; head light bulbs; tail light bulbs; vehicle turn signal light bulbs; dashboard light bulbs; electric torches for lighting; lights for vehicles and lamps; reflectors for vehicles; air conditioning apparatus; air conditioning filters; defrosting apparatus for vehicles; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machinery, and earth moving machinery, namely, backup lights for land vehicles; coolant recovery systems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs; LED light bulbs; rear lights for vehicles; valves as part of radiatorsClass 011 for Light lenses; machine head lights; interior lights; machine work lights; light, machine and lamp; light bulbs; head light bulbs; tail light bulbs; vehicle turn signal light bulbs; dashboard light bulbs; electric torches for lighting; lights for vehicles and lamps; reflectors for vehicles; air conditioning apparatus; air conditioning filters; defrosting apparatus for vehicles; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machinery, and earth moving machinery, namely, backup lights for land vehicles; coolant recovery systems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs; LED light bulbs; rear lights for vehicles; valves as part of radiators
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 proposes to amend the following:

Current:
Class 017 for Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal; Flexible pipes, tubes, fittings, hoses, seals, junctions, and rings not of metal; non-metal seals for use on pipe joints and flanges; semi-processed brake lining material; clutch linings; non-metal gaskets for commercial and industrial applications; insulating gloves; rings of rubber or of plastic for use as pipe connection seals; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machines, and earth moving machines, namely, connecting hoses for vehicle radiators; absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids; non-medical adhesive strips; snubber seals; cylinder seals; piston wear rings; insulation used for sound suppress and HVAC
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: Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; Flexible pipes, tubes, fittings, hoses, seals, junctions, and rings not of metal; plastics and resins in extruded form for use in manufacture; non-metal seals for use on pipe joints and flanges; packing, stopping and insulating materials; semi-processed brake lining material; flexible pipes, tubes and hoses, not of metal; clutch linings; non-metal gaskets for commercial and industrial applications; insulating gloves; rings of rubber or of plastic for use as pipe connection seals; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machines, and earth moving machines, namely, connecting hoses for vehicle radiators; absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids; non-medical adhesive strips; snubber seals; cylinder seals; piston wear rings; insulation used for sound suppress and HVACClass 017 for Flexible pipes, tubes, fittings, hoses, seals, junctions, and rings not of metal; non-metal seals for use on pipe joints and flanges; semi-processed brake lining material; clutch linings; non-metal gaskets for commercial and industrial applications; insulating gloves; rings of rubber or of plastic for use as pipe connection seals; parts and fittings for all the aforesaid goods sold as a unit with the goods; parts and fittings for land vehicles, agricultural machines, and earth moving machines, namely, connecting hoses for vehicle radiators; absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids; non-medical adhesive strips; snubber seals; cylinder seals; piston wear rings; insulation used for sound suppress and HVAC
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 proposes to amend the following:

Current:
Class 025 for Clothing, footwear, headwear; Apparel, footwear and headwear, namely, work, sport, dress, casual, children, and infant clothing in the nature of shirts, sweaters, pullovers, jackets, pants, shorts, parkas, vests, and rainwear; headwear; caps being headwear; hats; visors being headwear; knit hats; sun hats; uniforms; one piece jumpsuits; shirts; t-shirts; golf shirts; dress shirts; sport shirts; polo shirts; collared shirts; night shirts; sweatshirts; wind shirts; sweaters; pullovers; jumpers; fleece pullovers; pants; dress pants; sport pants; casual pants; jeans; lounge pants; sleep pants; sweatpants; wind pants; shorts; jackets; fleece jackets; parkas; vests; rainwear; bathing suits; underwear; gloves; ski gloves; mittens; socks; sock liners; footwear, namely, shoes, casual shoes; sandals, boots, work boots, sport shoes, hiking shoes, hiking boots; insoles for shoes and boots; belts; leather belts; fabric belts; ties; scarves; bandanas; wrist bands as clothing; bibs not of paper
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: Clothing, footwear, headwear; Apparel, footwear and headwear, namely, work, sport, dress, casual, children, and infant clothing in the nature of shirts, sweaters, pullovers, jackets, pants, shorts, parkas, vests, and rainwear; headwear; caps being headwear; hats; visors being headwear; knit hats; sun hats; uniforms; one piece jumpsuits; shirts; t-shirts; golf shirts; dress shirts; sport shirts; polo shirts; collared shirts; night shirts; sweatshirts; wind shirts; jumpers; sweaters; fleece pullovers; pullovers; pants; dress pants; sport pants; casual pants; jeans; lounge pants; sleep pants; sweatpants; wind pants; fleece jackets; bathing suits; underwear; shorts; gloves; jackets; ski gloves; mittens; parkas; socks; vests; sock liners; rainwear; footwear, namely, shoes, casual shoes; sandals, boots, work boots, sport shoes, hiking shoes, hiking boots; insoles for shoes and boots; belts; leather belts; fabric belts; ties; scarves; bandanas; wrist bands as clothing; bibs not of paperClass 025 for Apparel, footwear and headwear, namely, work, sport, dress, casual, children, and infant clothing in the nature of shirts, sweaters, pullovers, jackets, pants, shorts, parkas, vests, and rainwear; headwear; caps being headwear; hats; visors being headwear; knit hats; sun hats; uniforms; one piece jumpsuits; shirts; t-shirts; golf shirts; dress shirts; sport shirts; polo shirts; collared shirts; night shirts; sweatshirts; wind shirts; jumpers; fleece pullovers; pants; dress pants; sport pants; casual pants; jeans; lounge pants; sleep pants; sweatpants; wind pants; fleece jackets; bathing suits; underwear; gloves; ski gloves; mittens; socks; sock liners; footwear, namely, shoes, casual shoes; sandals, boots, work boots, sport shoes, hiking shoes, hiking boots; insoles for shoes and boots; belts; leather belts; fabric belts; ties; scarves; bandanas; wrist bands as clothing; bibs not of paper
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 proposes to amend the following:

Current:
Class 028 for Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees; Toys and sporting goods; toy vehicles and accessories therefor; balls for sports; golf tees, golf tee markers and tins; golf divot repair tools; hand grips for golf clubs; golf clubs; golf putters; covers for golf clubs; bats for games; aerodynamic disk for use in playing catching games; corn-hole game sets; corn-hole bags; washer toss games; scale model vehicles; scale model kits; toy models; construction site themed play sets; playground equipment including sand boxes; baby gyms; swings; toy work tools; toy tool benches; radio controlled toy vehicles; remote controlled toy vehicles; construction toys; ride-on toy vehicles; battery operated ride-on toys; puzzles; kites; role-playing games; board games; dart games; toy blocks; playing cards; balloons; toy cameras; plush toys; plush dice; Christmas ornaments; rattles; dolls; toy figurines; toys for pets; tricycles for infants; scooters; toy trains and parts and accessories therefore; train sets; toy cars; slot cars; slot car sets and parts and accessories therefore; handheld units for playing electronic games; protective padding for bicycles, skateboards, and scooters; party favor hats; paper party favors; party favors in the nature of small toys or noise makers; fishing tackle; fishing lines; fishing lures; fishing tackle boxes; hunting game calls; and bird calls
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: Games, toys and playthings; Toys and sporting goods; video game apparatus; toy vehicles and accessories therefor; gymnastic and sporting articles; balls for sports; decorations for Christmas trees; golf tees, golf tee markers and tins; golf divot repair tools; hand grips for golf clubs; golf clubs; golf putters; covers for golf clubs; bats for games; aerodynamic disk for use in playing catching games; corn-hole game sets; corn-hole bags; washer toss games; scale model vehicles; scale model kits; toy models; construction site themed play sets; playground equipment, namely, sand boxes; baby gyms; swings; toy work tools; playground equipment including sand boxes; toy tool benches; radio controlled toy vehicles; remote controlled toy vehicles; construction toys; ride-on toy vehicles; battery operated ride-on toys; puzzles; kites; role-playing games; board games; dart games; toy blocks; playing cards; balloons; toy cameras; plush toys; plush dice; Christmas ornaments; rattles; dolls; toy figurines; toys for pets; tricycles for infants; scooters; toy trains and parts and accessories therefore; train sets; toy cars; slot cars; slot car sets and parts and accessories therefore; handheld units for playing electronic games; protective padding for bicycles, skateboards, and scooters; party favor hats; paper party favors; party favors in the nature of small toys and noise makers; fishing tackle; fishing lines; fishing lures; party favors in the nature of small toys or noise makers; fishing tackle boxes; hunting game calls; and bird callsClass 028 for Toys and sporting goods; toy vehicles and accessories therefor; balls for sports; golf tees, golf tee markers and tins; golf divot repair tools; hand grips for golf clubs; golf clubs; golf putters; covers for golf clubs; bats for games; aerodynamic disk for use in playing catching games; corn-hole game sets; corn-hole bags; washer toss games; scale model vehicles; scale model kits; toy models; construction site themed play sets; playground equipment, namely, sand boxes; baby gyms; swings; toy work tools; toy tool benches; radio controlled toy vehicles; remote controlled toy vehicles; construction toys; ride-on toy vehicles; battery operated ride-on toys; puzzles; kites; role-playing games; board games; dart games; toy blocks; playing cards; balloons; toy cameras; plush toys; plush dice; Christmas ornaments; rattles; dolls; toy figurines; toys for pets; tricycles for infants; scooters; toy trains and parts and accessories therefore; train sets; toy cars; slot cars; slot car sets and parts and accessories therefore; handheld units for playing electronic games; protective padding for bicycles, skateboards, and scooters; party favor hats; paper party favors; party favors in the nature of small toys and noise makers; fishing tackle; fishing lines; fishing lures; fishing tackle boxes; hunting game calls; and bird calls
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: Caterpillar Inc., a corporation of Delaware, having an address of
      100 N.E. Adams Street
      Peoria, Illinois 61629
      United States

Proposed: Caterpillar Inc., a corporation of Delaware, having an address of
      100 N.E. Adams Street
      Peoria, Illinois 61629
      United States
      Email Address: XXXX
Correspondence Information (current):
      CHRISTOPHER P. FOLEY
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@finnegan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): julie.stewart@finnegan.com

The docket/reference number is 08407.1905.
Correspondence Information (proposed):
      Christopher P. Foley
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@finnegan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): julie.stewart@finnegan.com

The docket/reference number is 08407.1905.

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)
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: /Kelsey L. Milman/      Date: 11/25/2020
Signatory's Name: Kelsey L. Milman
Signatory's Position: Deputy General Counsel
Signatory's Phone Number: Please correspond with the Attorney of Record


Response Signature
Signature: /Christopher P. Foley/     Date: 11/30/2020
Signatory's Name: Christopher P. Foley
Signatory's Position: Attorney of record

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:    CHRISTOPHER P. FOLEY
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL
   
   901 NEW YORK AVENUE NW
   WASHINGTON, District of Columbia 20001
Mailing Address:    Christopher P. Foley
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL
   901 NEW YORK AVENUE NW
   WASHINGTON, District of Columbia 20001
        
Serial Number: 88683686
Internet Transmission Date: Mon Nov 30 08:30:54 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2020113008305411459
0-88683686-7507496af23135c8f3a9636be41b9
2a597059e3de7eec87c05169c490cba3a2fc-N/A
-N/A-20201125103307389075