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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88819492 |
LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88819492/mark.png |
LITERAL ELEMENT |
NFN NATIONAL FUELING NETWORK |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
The color(s) blue and black is/are claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the words NATIONAL FUELING NETWORK in black, upper-case block letters, above which, spanning the length of these words,
are the letters NFN in large, blue, upper-case stylized letters. |
OWNER SECTION (current) |
NAME |
Parkland Fuel Corporation |
MAILING ADDRESS |
6302, 333 - 96th Avenue NE |
CITY |
Calgary, Alberta |
ZIP/POSTAL CODE |
T3K0S3 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
EMAIL |
XXXX |
OWNER SECTION (proposed) |
NAME |
Parkland Fuel Corporation |
MAILING ADDRESS |
6302, 333 - 96th Avenue NE |
CITY |
Calgary, Alberta |
ZIP/POSTAL CODE |
T3K0S3 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
EMAIL |
XXXX |
ARGUMENT(S) |
The Examining Attorney has refused registration on the basis that the description of goods in Class 4 is indefinite and has suggested the addition
of six Classes to the application. Applicant hereby amends the application by adding the six Classes of goods and also amends the description of goods in Class 4. The Examining Attorney is also
requiring the entry of a disclaimer to the exclusive rights to ?NATIONAL FUELING NETWORK? apart from the mark as shown. Applicant is amending the application by entering the reqired disclaimer. The
Examining Attorney has also inquired after the status of the Canadian application upon which priority is based. Applicant advises that the Canadian application has not yet matured to registration and
respectfully requests that the Examining Attorney place the instant application into suspension until the document becomes available. |
GOODS AND/OR SERVICES SECTION (004) (current) |
INTERNATIONAL CLASS |
004 |
DESCRIPTION |
Equipment namely, tanks, furnaces and equipment using Gasoline, Diesel, Furnace Oil, propane, Gasoline, DEF (Diesel Exhaust Fluid) as a
fuel or for storage of Gasoline, Diesel, Furnace Oil, Propane, Gasoline, Lubricants, DEF (Diesel Exhaust Fluid); Fuel; Fuel Gas; Petrol Gasoline; Gasoline, Diesel; Furnace Oil; Propane; Gasoline;
Lubricants; DEF (Diesel Exhaust Fluid) |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
GOODS AND/OR SERVICES SECTION (004) (proposed) |
INTERNATIONAL CLASS |
004 |
TRACKED TEXT DESCRIPTION |
Equipment namely, tanks, furnaces and equipment using Gasoline, Diesel, Furnace Oil, propane, Gasoline,
DEF (Diesel Exhaust Fluid) as a fuel or for storage of Gasoline, Diesel, Furnace Oil, Propane, Gasoline, Lubricants, DEF (Diesel Exhaust Fluid); Fuel; fuel gas; petrol gasoline; diesel oil and fuel; Gasoline, Diesel; furnace oil; propane; gasoline; all purpose lubricants; Lubricants; DEF (Diesel Exhaust Fluid) |
FINAL DESCRIPTION |
Fuel; fuel gas; petrol gasoline; diesel oil and fuel; furnace oil; propane; gasoline; all purpose lubricants |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (001)(class added) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
DEF (diesel exhaust fluid) |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (006)(class added) |
INTERNATIONAL CLASS |
006 |
DESCRIPTION |
Liquefied gas storage tanks of metal; metal storage containers for diesel, furnace oil, propane, gasoline, lubricants, DEF (diesel
exhaust fluid) |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (007)(class added) |
INTERNATIONAL CLASS |
007 |
DESCRIPTION |
Vehicle engine parts, namely, oil tanks |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (011)(class added) |
INTERNATIONAL CLASS |
011 |
DESCRIPTION |
Equipment, namely furnaces that use diesel, furnace oil, propane, gasoline, DEF (diesel exhaust fluid) as a fuel |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (012)(class added) |
INTERNATIONAL CLASS |
012 |
DESCRIPTION |
Vehicle fuel tanks |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
GOODS AND/OR SERVICES SECTION (020)(class added) |
INTERNATIONAL CLASS |
020 |
DESCRIPTION |
Gas storage tanks, not of metal or masonry |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1991604 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
10/22/2019 |
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. |
ADDITIONAL STATEMENTS SECTION |
DISCLAIMER |
No claim is made to the exclusive right to use NATIONAL FUELING NETWORK apart from the mark as shown. |
CORRESPONDENCE INFORMATION (current) |
NAME |
JEFFREY R. CADWELL |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
ip.docket@dorsey.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
cadwell.jeffrey@dorsey.com; dahl.cathy@dorsey.com; ankarlo.patricia@dorsey.com |
DOCKET/REFERENCE NUMBER |
T286641.US.0 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Jeffrey R. Cadwell |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
ip.docket@dorsey.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
cadwell.jeffrey@dorsey.com; dahl.cathy@dorsey.com; ankarlo.patricia@dorsey.com |
DOCKET/REFERENCE NUMBER |
T286641.US.0 |
PAYMENT SECTION |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
NUMBER OF CLASSES |
6 |
TOTAL FEES DUE |
1650 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The undersigned has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules
of Practice. The undersigned acknowledges that the USPTO may, upon later review, require a signed declaration. |
RESPONSE SIGNATURE |
/Cathleen F. Dahl/ |
SIGNATORY'S NAME |
Cathleen F. Dahl |
SIGNATORY'S POSITION |
Attorney of Record, Minnesota Bar Member |
SIGNATORY'S PHONE NUMBER |
612.492.6854 |
DATE SIGNED |
08/31/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Sep 01 00:13:13 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.X.XXX-2
0200901001313553119-88819
492-750b37b9d23ebb26a14a2
7823199b2f7e59cacd1b126df
7c5fc3291d6f28379ae-CC-13
119222-202009010003130742
22 |
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.
88819492 NFN NATIONAL FUELING NETWORK (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8881949 2/large) has been amended as
follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examining Attorney has refused registration on the basis that the description of goods in Class 4 is indefinite and has suggested the addition of six Classes to the application. Applicant hereby
amends the application by adding the six Classes of goods and also amends the description of goods in Class 4. The Examining Attorney is also requiring the entry of a disclaimer to the exclusive
rights to ?NATIONAL FUELING NETWORK? apart from the mark as shown. Applicant is amending the application by entering the reqired disclaimer. The Examining Attorney has also inquired after the status
of the Canadian application upon which priority is based. Applicant advises that the Canadian application has not yet matured to registration and respectfully requests that the Examining Attorney
place the instant application into suspension until the document becomes available.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 004 for Equipment namely, tanks, furnaces and equipment using Gasoline, Diesel, Furnace Oil, propane, Gasoline, DEF (Diesel Exhaust Fluid) as a fuel or for storage of Gasoline, Diesel, Furnace
Oil, Propane, Gasoline, Lubricants, DEF (Diesel Exhaust Fluid); Fuel; Fuel Gas; Petrol Gasoline; Gasoline, Diesel; Furnace Oil; Propane; Gasoline; Lubricants; DEF (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.
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[ Canada application number 1991604 filed 10/22/2019]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Equipment namely, tanks, furnaces and equipment using Gasoline, Diesel, Furnace Oil, propane, Gasoline, DEF (Diesel Exhaust Fluid) as a
fuel or for storage of Gasoline, Diesel, Furnace Oil, Propane, Gasoline, Lubricants, DEF (Diesel Exhaust Fluid);
Fuel;
fuel gas;
petrol gasoline;
diesel oil and fuel;
Gasoline, Diesel;
furnace oil;
propane;
gasoline;
all purpose lubricants;
Lubricants;
DEF (Diesel Exhaust Fluid)Class 004 for Fuel; fuel gas; petrol gasoline; diesel oil and fuel; furnace oil; propane; gasoline; all purpose lubricants
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 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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 001 for DEF (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.
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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 006 for Liquefied gas storage tanks of metal; metal storage containers for diesel, furnace oil, propane, gasoline, lubricants, DEF (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.
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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 007 for Vehicle engine parts, namely, oil tanks
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 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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 011 for Equipment, namely furnaces that use diesel, furnace oil, propane, gasoline, DEF (diesel exhaust fluid) as a fuel
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 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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 012 for Vehicle fuel tanks
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 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 [ Canada application number 1991604 filed 10/22/2019]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 020 for Gas storage tanks, not of metal or masonry
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 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 [ Canada application number 1991604 filed 10/22/2019]. 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.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Parkland Fuel Corporation, a corporation of Canada, having an address of
6302, 333 - 96th Avenue NE
Calgary, Alberta, T3K0S3
Canada
Email Address: XXXX
Proposed: Parkland Fuel Corporation, a corporation of Canada, having an address of
6302, 333 - 96th Avenue NE
Calgary, Alberta, T3K0S3
Canada
Email Address: XXXX
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use NATIONAL FUELING NETWORK apart from the mark as shown.
Correspondence Information (current):
JEFFREY R. CADWELL
PRIMARY EMAIL FOR CORRESPONDENCE: ip.docket@dorsey.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cadwell.jeffrey@dorsey.com; dahl.cathy@dorsey.com; ankarlo.patricia@dorsey.com
The docket/reference number is T286641.US.0.
Correspondence Information (proposed):
Jeffrey R. Cadwell
PRIMARY EMAIL FOR CORRESPONDENCE: ip.docket@dorsey.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cadwell.jeffrey@dorsey.com; dahl.cathy@dorsey.com; ankarlo.patricia@dorsey.com
The docket/reference number is T286641.US.0.
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 $1650 is being submitted.
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: /Cathleen F. Dahl/ Date: 08/31/2020
Signatory's Name: Cathleen F. Dahl
Signatory's Position: Attorney of Record, Minnesota Bar Member
Signatory's Phone Number: 612.492.6854
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: JEFFREY R. CADWELL
DORSEY & WHITNEY LLP
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
Mailing Address: Jeffrey R. Cadwell
DORSEY & WHITNEY LLP
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
RAM Sale Number: 88819492
RAM Accounting Date: 09/01/2020
Serial Number: 88819492
Internet Transmission Date: Tue Sep 01 00:13:13 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XXX-2020090100131355
3119-88819492-750b37b9d23ebb26a14a278231
99b2f7e59cacd1b126df7c5fc3291d6f28379ae-
CC-13119222-20200901000313074222