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. 88712870 PARAGON(Standard Characters, see http://uspto.report/TM/88712870/mark.png) has been amended as follows:

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

The March 11, 2020 Office Action initially refuses the present application due to a likelihood of confusion with the mark in U.S. Registration No. 2959016, based in part on an alleged similarity between Applicant's and Registrant's goods. Namely, Applicant's mark covers "hydraulic pumps," in Class 7 whereas Registrant's mark covers "locomotive components, namely, fuel pumps, oil pumps, oil pumps for use in motors and engines, suction pumps, water pumps for use in motors and engines," in Class 7. Applicant now submits an amended description of its goods to expressly exclude all goods in the cited mark, i.e., any hydraulic pumps as "locomotive components" which are highly specialized items meant for use in a very specific industry/application. By doing so, Applicant believes it has obviated any likelihood of confusion with the cited registration and now respectfully requests that the above-referenced application be allowed to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for hydraulic pumps
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: hydraulic pumps; hydraulic pumps, excluding hydraulic pumps used in locomotivesClass 007 for hydraulic pumps, excluding hydraulic pumps used in locomotives
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: Universal Pressure Pumping, Inc., a corporation of Delaware, having an address of

            Suite 500      450 Gears Road
      Houston, Texas 77067
      United States

Proposed: Universal Pressure Pumping, Inc., a corporation of Delaware, having an address of
      Suite 500
      450 Gears Road
      Houston, Texas 77067
      United States
      Email Address: XXXX
Correspondence Information (current):
      SCOTT S. HAVLICK
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@hollandhart.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 82504.0023.
Correspondence Information (proposed):
      Scott S. Havlick
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@hollandhart.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jdlarson@hollandhart.com; atticus.trademark.nobill@hollandhart.com

The docket/reference number is 82504.0023.

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: /Jeffrey D. Larson/     Date: 06/03/2020
Signatory's Name: Jeffrey D. Larson
Signatory's Position: Other Appointed Attorney of Record, Colorado Bar Member

Signatory's Phone Number: 303-245-2094

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:    SCOTT S. HAVLICK
   HOLLAND & HART LLP
   ATTN: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
Mailing Address:    Scott S. Havlick
   HOLLAND & HART LLP
   ATTN: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
        
Serial Number: 88712870
Internet Transmission Date: Wed Jun 03 11:17:46 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020060311174622
7652-88712870-710cacf685715c952dbc42fbbb
670cab17392cec5689d13fdb83d17d89c91b8f9d
-N/A-N/A-20200603105512470775