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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88789698 FIXMATIC(Standard Characters, see http://uspto.report/TM/88789698/mark.png) has been amended as follows:

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

The office sets forth the following issues in the non final office action of April 28, 2020: Section 2(d) refusal based upon U.S. Registration No. 5163551 (cited registration) and Identification Requirement. Applicant is the owner of the cited registration and pursuant to TMEP 812.01 submits herewith a statement supported by an affidavit or declaration under 37 C.F.R. 2.20, that the Applicant is the owner of the cited registration. Regarding the identification of goods, the Applicant has amended the goods as suggested by the Office. Applicant also submits with this response a certified copy of the priority registration so as to proceed to registration under 44(e). Accordingly, the 1(b) filing basis has been deleted. In light of the foregoing, Applicant respectfully requests the application be passed to publication.

EVIDENCE
Evidence has been attached: Executed Declaration under 37 CFR 2.20
Original PDF file:
evi_232510173-20201016171 758900151_._512178_A_111_ 435_x_Declaration.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 012 for Carrier units, in particular bicycle racks, that can be fixed to motor vehicles, in particular to motor vehicle trailer hitches; Carrier units, in particular load and/or bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; Coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches; Coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; Trailer hitches for motor vehicles; Trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and/or bicycle racks; Trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and/or bicycle rack
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[ European Union Trademark - EUTM application number 018107374 filed 08/12/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Carrier units, in particular bicycle racks, that can be fixed to motor vehicles, in particular to motor vehicle trailer hitches; Carrier units, in particular load and/or bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; Carrier units, in particular load and bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; Coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches; Coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; Trailer hitches for motor vehicles; Trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and/or bicycle racks; Trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and bicycle racks; Trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and/or bicycle rack; Trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and bicycle rackClass 012 for Carrier units, in particular bicycle racks, that can be fixed to motor vehicles, in particular to motor vehicle trailer hitches; Carrier units, in particular load and bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; Trailer hitches for motor vehicles; Trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and bicycle racks; Trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and bicycle rack
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 [ European Union Trademark - EUTM application number 018107374 filed 08/12/2019]. 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 [ European Union Trademark - EUTM registration number 018107374 registered 12/20/2019 with a renewal date of __________ and an expiration date of 08/12/2029 ], 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:
FRU0-232510173-171758900_ ._512178_A_111435x_Certif ied_Priority_Registration.pdf
Converted PDF file(s) ( 6 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ACPS Automotive GmbH a(n) gesellschaft mit beschränkter haftung (gmbh), legally organized under the laws of Germany, having an address of
      Steinbeisstrasse 6
      Markgroeningen, 71706
      Germany

Proposed: ACPS Automotive GmbH, gesellschaft mit beschränkter haftung (gmbh) legally organized under the laws of Germany, having an address of
      Steinbeisstrasse 6
      Markgroeningen, 71706
      Germany
      Email Address: XXXX
Correspondence Information (current):
      TIMOTHY P. NAILL
      PRIMARY EMAIL FOR CORRESPONDENCE: rockmail@reinhartlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alocke@reinhartlaw.com

The docket/reference number is 512178.
Correspondence Information (proposed):
      Timothy P. Naill
      PRIMARY EMAIL FOR CORRESPONDENCE: rockmail@reinhartlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 512178.

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
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Timothy P. Naill/     Date: 10/16/2020
Signatory's Name: Timothy P. Naill
Signatory's Position: Attorney of Record/IL Bar Member

Signatory's Phone Number: 815-633-5300

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:    TIMOTHY P. NAILL
   REINHART BOERNER VAN DEUREN P.C.
   
   2215 PERRYGREEN WAY
   ROCKFORD, Illinois 61107
Mailing Address:    Timothy P. Naill
   REINHART BOERNER VAN DEUREN P.C.
   2215 PERRYGREEN WAY
   ROCKFORD, Illinois 61107
        
Serial Number: 88789698
Internet Transmission Date: Fri Oct 16 17:37:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20201016173742316
572-88789698-750404f1eda544424fec664d9c9
70456a13a9bfc4aa63bf545b1ee2c944518ed-N/
A-N/A-20201016171758900151