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. 88737412 COLORADO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8873741 2/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 002 for Paints, varnishes, lacquers; anti-rust preparations and wood preservatives; colorants; mordants; raw natural resins; metal in foil and powder form for use in painting, decorating, printing and art; dyes; thinners for lacquers; thinners for paints; coatings; wood coatings; anti-rust oils; lacquers; binding preparations for paints; paints; anti-fouling paints; bactericidal paints; fireproof paints; paints, varnishes, lacquers; anti-rust preparations and wood preservatives; colorants; mordants; raw natural resins; metal in foil and powder form for use in painting, decorating, printing and art; pigments; anti-corrosive preparations; anti-rust preparations; wood preservatives; protective preparations for metals; varnishes
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[ Morocco application number 209251 filed 10/24/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Paints, varnishes, lacquers; anti-rust preparations and wood preservatives; anti-rust preparations being anti-rust greases and wood preservatives; colorants; mordants; mordants for leather; raw natural resins; metal in foil and powder form for use in painting, decorating, printing and art; dyes; dyes for wood; thinners for lacquers; thinners for paints; coatings; Floor coatings; wood coatings; wood coatings being paints; anti-rust oils; lacquers; binding preparations for paints; binding preparations for paints, namely, binding agents for paints; paints; anti-fouling paints; bactericidal paints; fireproof paints; paints, varnishes, lacquers; pigments; anti-rust preparations and wood preservatives; anti-corrosive preparations, namely, anti-corrosive oils; colorants; anti-rust preparations, namely, anti-rust greases; mordants; wood preservatives; raw natural resins; protective preparations for metals, namely, rust protecting paints; metal in foil and powder form for use in painting, decorating, printing and art; varnishes; anti-corrosive preparations; anti-rust preparations; protective preparations for metalsClass 002 for Paints, varnishes, lacquers; anti-rust preparations being anti-rust greases and wood preservatives; colorants; mordants for leather; raw natural resins; metal in foil and powder form for use in painting, decorating, printing and art; dyes for wood; thinners for lacquers; thinners for paints; Floor coatings; wood coatings being paints; anti-rust oils; lacquers; binding preparations for paints, namely, binding agents for paints; paints; anti-fouling paints; bactericidal paints; fireproof paints; pigments; anti-corrosive preparations, namely, anti-corrosive oils; anti-rust preparations, namely, anti-rust greases; wood preservatives; protective preparations for metals, namely, rust protecting paints; varnishes
Deleted Filing Basis: 1(b)
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 [ Morocco application number 209251 filed 10/24/2019]. 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 [ Morocco registration number 209251 registered 10/24/2019 with a renewal date of __________ and an expiration date of 10/24/2029 ], 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:
FRU0-26018cc104d4901ce1e7 43d871a054-111311746_._CO LORADO.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Colorado, a corporation of Morocco, having an address of

            Route Mly Thami Km 15 commune rurale      Oulad Azouz Dar Bouaâza (Nouacer)
      Casablanca,
      Morocco

Proposed: Colorado, a corporation of Morocco, having an address of
      Route Mly Thami Km 15 commune rurale
      Oulad Azouz Dar Bouaâza (Nouacer)
      Casablanca,
      Morocco
      Email Address: XXXX
Correspondence Information (current):
      JULIANNE ABELMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: fterranella@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@lawabel.com

The docket/reference number is 880083.
Correspondence Information (proposed):
      Julianne Abelman
      PRIMARY EMAIL FOR CORRESPONDENCE: fterranella@lawabel.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@lawabel.com; fterranella@lawafs.com

The docket/reference number is 880083.

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: /ft/      Date: 05/07/2020
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for owner, NY Bar member No. 1918697 (1984)
Signatory's Phone Number: 2129499022


Response Signature
Signature: /ft/     Date: 05/07/2020
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for owner, NY Bar member No. 1918697 (1984)

Signatory's Phone Number: 2129499022

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:    JULIANNE ABELMAN
   ABELMAN FRAYNE & SCHWAB
   10TH FLOOR
   666 3RD AVENUE
   NEW YORK, New York 10017
Mailing Address:    Julianne Abelman
   ABELMAN FRAYNE & SCHWAB
   10TH FLOOR
   666 3RD AVENUE
   NEW YORK, New York 10017
        
Serial Number: 88737412
Internet Transmission Date: Thu May 07 11:19:19 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XX:XXXX:XXXX:XXXX:XXXX:XX
XX:XXXX-20200507111919901166-88737412-71
0d97d5c7abeb462f626add94636d4abc11132fb5
f4a6ffd3f9ae931f6b12bb-N/A-N/A-202005071
11311746924