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. 88806462 PEAR(Standard Characters, see http://uspto.report/TM/88806462/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 017 for Rubber; thermoplastic rubber; thermoplastic compounds; enhanced rubber
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: Rubber; Rubber, namely, reclaimed rubber, synthetic rubber, polysulfide rubber, cross-linkable rubber, liquid rubber, rubber sheets and plates, rubber derivatives, and processed rubber for use in manufacturing in a wide variety of industries; thermoplastic rubber; thermoplastic compounds; thermoplastic compounds, namely, recycled thermoplastic compounds in pellet or sheet form for use in further manufacture, semi-processed thermoplastics in pellet or sheet form, thermoplastic elastomer resins and thermoplastic concentrates in pellet or sheet form for use in manufacturing in a wide variety of industries; enhanced rubber; enhanced rubber, namely, rubber enhanced with asphalt binder; sealants made of rubber; sealants made of thermoplastic compoundsClass 017 for Rubber, namely, reclaimed rubber, synthetic rubber, polysulfide rubber, cross-linkable rubber, liquid rubber, rubber sheets and plates, rubber derivatives, and processed rubber for use in manufacturing in a wide variety of industries; thermoplastic rubber; thermoplastic compounds, namely, recycled thermoplastic compounds in pellet or sheet form for use in further manufacture, semi-processed thermoplastics in pellet or sheet form, thermoplastic elastomer resins and thermoplastic concentrates in pellet or sheet form for use in manufacturing in a wide variety of industries; enhanced rubber, namely, rubber enhanced with asphalt binder; sealants made of rubber; sealants made of thermoplastic compounds
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 019 for Asphalt; enhanced asphalt rubber; roofing; sealants; rubberized asphalt
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: Asphalt; enhanced asphalt rubber; asphalt enhanced with rubber; roofing; roofing, namely, roofing membranes, synthetic roofing shingles, and non-metal roofing; sealants; sealants, namely, asphalt-based sealants for use on pavement, roofs, and in industrial applications; rubberized asphaltClass 019 for Asphalt; asphalt enhanced with rubber; roofing, namely, roofing membranes, synthetic roofing shingles, and non-metal roofing; sealants, namely, asphalt-based sealants for use on pavement, roofs, and in industrial applications; rubberized asphalt
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 hereby adds the following class of goods/services to the application:
New: Class 001 for Unprocessed thermoplastic compounds, thermoplastic elastomer resins and thermoplastic concentrates and granules for use in manufacturing in a wide variety of industries; roofing adhesive
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: Prism Worldwide, LLC, a corporation of Delaware, having an address of

            Suite A      505 Market Street
      Kirkland, Washington 98033-6152
      United States
      Email Address: XXXX

Proposed: Prism Worldwide, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      Suite A
      505 Market Street
      Kirkland, Washington 98033-6152
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
PEAR appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.

Correspondence Information (current):
      PETER BECKER
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@lanepowell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): beckerp@lanepowell.com; hoofmank@lanepowell.com

The docket/reference number is 132106.0006.
Correspondence Information (proposed):
      Peter Becker
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@lanepowell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lukaswerners@lanepowell.com

The docket/reference number is 132106.0006.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Cassandra Mercer/      Date: 11/12/2020
Signatory's Name: Cassandra Mercer
Signatory's Position: Attorney of record, Oregon bar member
Signatory's Phone Number: 9712953377


Response Signature
Signature: /Cassandra Mercer/     Date: 11/12/2020
Signatory's Name: Cassandra Mercer
Signatory's Position: Attorney of record, Oregon bar member

Signatory's Phone Number: 9712953377

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:    PETER BECKER
   LANE POWELL PC
   SUITE 4200
   1420 FIFTH AVENUE
   SEATTLE, Washington 98101-2375
Mailing Address:    Peter Becker
   LANE POWELL PC
   SUITE 4200
   1420 FIFTH AVENUE
   SEATTLE, Washington 98101-2375
        
RAM Sale Number: 88806462
RAM Accounting Date: 11/12/2020
        
Serial Number: 88806462
Internet Transmission Date: Thu Nov 12 16:58:39 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020111216583999
7900-88806462-750ace1b9becfc5b7ab2a14120
f9bbe6dcc9d6ad06a8c846acf9b1572e33dd2a8-
CC-58388587-20201112163952953209