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)

---

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. 90005244 VETTEC(Standard Characters, see http://uspto.report/TM/90005244/mark.png) has been amended as follows:

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

This is in response to the Priority Action issued September 8, 2020.

The only issue raised is amending the identification of goods to comply with the USPTO requirements and the Nice classification. Applicant has amended its "adhesive" goods and placed them in Class 1, as required. Applicant has also amended its Class 5, as requested.

As for the goods in Class 8, Applicant respectfully submits that these goods are properly classified in Class 8. Attached are two active registrations for marks containing nearly the same identification of goods, both having been approved and registered in the last two years, where the goods were in Class 8. Also, in looking at the Id Manual, there are numerous entries in Class 8 for similar type non-electric, hand powered extrusion or dispensing guns:

008-4013 008 Hand-operated guns for the extrusion of mastics

008-4080 008 Hand-operated spray guns

008-4158 008 Hand-operated guns for the extrusion of {indicate material extruded, e.g., adhesives, sealants, etc.}

008-4183 008 Hand-operated quilt basting guns

008-4201 008 Hand-operated grease guns

008-836 008 Non-electric caulking guns

008-47 008 Manually-operated grease guns

Most notably is the entry "Hand-operated guns for the extrusion of {indicate material extruded, e.g., adhesives, sealants, etc.} ".Applicant goods fall within this category. Thus, Applicant respectfully requests that its goods "Manually-operated adhesive dispensing guns and nozzles for same" remain in Class 8.

To clarify the "for same" wording, Applicant changed this wording to "nozzles therefor" to make it clear that the nozzles are for the dispensing guns.

Applicant believes it has responded to all of the outstanding issues. The Examining Attorney is encouraged to contact the undersigned Attorney if any other issues need to be addressed.

Respectfully submitted,

EVIDENCE
Evidence has been attached: third party registrations, that registered within the last 2 years, showing "manually-operated dispensing guns" in Class 8
Original PDF file:
evi_21613612218-202010271 21707845243_._REgNo542024.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_21613612218-202010271 21707845243_._RegNo576290 0.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for veterinary preparations for the treatment of animal hooves; equine hoof care products, namely, a polymer adhesive for creating hoof extensions for foals; synthetic curable liquid elastamer for forming protective layer on equine hooves for curative and therapeutic purposes; horseshoe adhesive; polymer adhesive for repair and cushioning of horse hooves; adhesive for adhering blocks to hooves of bovines; composition for forming hardened insert in the cavity in a hoof to an elevation flush with a horseshoe; urethane polymers for treatment of horse hoof wall cracks
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 04/18/1995 and first used in commerce at least as early as 04/18/1995 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Veterinary preparations for the treatment of animal hooves; equine hoof care products, namely, a polymer adhesive for creating hoof extensions for foals; veterinary preparations in the nature of equine hoof care products, namely, a polymer adhesive for creating hoof extensions for foals; synthetic curable liquid elastamer for forming protective layer on equine hooves for curative and therapeutic purposes; veterinary preparations, namely, synthetic curable liquid elastamer for forming protective layer on equine hooves for curative and therapeutic purposes; horseshoe adhesive; veterinary preparations for horses, namely, urethane polymers for treatment of horse hoof wall cracks; polymer adhesive for repair and cushioning of horse hooves; adhesive for adhering blocks to hooves of bovines; composition for forming hardened insert in the cavity in a hoof to an elevation flush with a horseshoe; urethane polymers for treatment of horse hoof wall cracksClass 005 for Veterinary preparations for the treatment of animal hooves; veterinary preparations in the nature of equine hoof care products, namely, a polymer adhesive for creating hoof extensions for foals; veterinary preparations, namely, synthetic curable liquid elastamer for forming protective layer on equine hooves for curative and therapeutic purposes; veterinary preparations for horses, namely, urethane polymers for treatment of horse hoof wall cracks
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 04/18/1995 and first used in commerce at least as early as 04/18/1995 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 008 for Manually-operated adhesive dispensing guns and nozzles for same
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1995 and first used in commerce at least as early as 00/00/1995 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Manually-operated adhesive dispensing guns and nozzles for same; Manually-operated adhesive dispensing guns, and nozzles thereforClass 008 for Manually-operated adhesive dispensing guns, and nozzles therefor
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1995 and first used in commerce at least as early as 00/00/1995 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 001 for Horseshoe adhesive; polymer adhesive for repair and cushioning of horse hooves; adhesive for adhering blocks to hooves of bovines; composition for forming hardened insert in the cavity in a hoof to an elevation flush with a horseshoe, namely liquid urethane
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 11/00/1998 and first used in commerce at least as early as 11/00/1998 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 001 . The specimen(s) submitted consists of photos displaying the mark directly on the goods listed in this class .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1
Specimen File2
Correspondence Information (current):
      SARAH OTTE GRABER
      PRIMARY EMAIL FOR CORRESPONDENCE: usptodock@whe-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sgraber@whe-law.com

The docket/reference number is KMC-581TM.
Correspondence Information (proposed):
      Sarah Otte Graber
      PRIMARY EMAIL FOR CORRESPONDENCE: usptodock@whe-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sgraber@whe-law.com; cjackson@whe-law.com

The docket/reference number is KMC-581TM.

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: /Sarah O. Graber/      Date: 10/27/2020
Signatory's Name: Sarah Otte Graber
Signatory's Position: Attorney for Applicant, Ohio bar member
Signatory's Phone Number: 513-707-0207


Response Signature
Signature: /Sarah O. Graber/     Date: 10/27/2020
Signatory's Name: Sarah Otte Graber
Signatory's Position: Attorney of Applicant, Ohio bar member

Signatory's Phone Number: 513-707-0207

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:    SARAH OTTE GRABER
   WOOD HERRON & EVANS LLP
   2700 CAREW TWR
   441 VINE STREET
   CINCINNATI, Ohio 45202
Mailing Address:    Sarah Otte Graber
   WOOD HERRON & EVANS LLP
   2700 CAREW TWR
   441 VINE STREET
   CINCINNATI, Ohio 45202
        
RAM Sale Number: 90005244
RAM Accounting Date: 10/27/2020
        
Serial Number: 90005244
Internet Transmission Date: Tue Oct 27 13:15:46 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202010271315464
08576-90005244-7509bb2f511a28cd719db2f5e
6da5adee9d408c737f3e93d7dd80c7b367aaa5d2
-CC-15444251-20201027121707845243