Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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.

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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.

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90043365 RESILIENT(Standard Characters, see http://uspto.report/TM/90043365/mark.png) has been amended as follows:

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

Registration on the Principal Register was refused based on alleged descriptiveness. Without any waiver of its rights at common law, Applicant is amending its application to be based on use and for registration on the Supplemental Register.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for foam and/or laminated boards for use in printing and photo mounting
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: foam and/or laminated boards for use in printing and photo mounting; Paper foam boards for use in printing and photo mounting; laminated paper boards for use in printing and photo mountingClass 016 for Paper foam boards for use in printing and photo mounting; laminated paper boards for use in printing and photo mounting

Deleted Filing Basis: 1(b)
In International Class 016, the mark was first used at least as early as 08/11/2020 . and first used in commerce at least as early as 08/11/2020 .

Applicant hereby submits one(or more) specimen(s) for Class 016. The specimen(s) submitted consists of label bearing the mark and affixed to the goods.
"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].
Original PDF file:
SPU0-47198018-20210330150 022061307_._02723415.PDF
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: None Provided
Webpage Date of Access: None Provided

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


Miscellaneous Statement
In response to the request for additional information about Applicant's goods, Applicant has amended the application to be based on use and refers to the specimen submitted with the Amendment to Allege Use. Additionally, Applicant is amending to seek registration on the Supplemental Register, thereby rendering moot the need for additional information.

Correspondence Information (current):
      Karin Segall
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 314061-US0.
Correspondence Information (proposed):
      Karin Segall
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 314061-US0.

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: /karinsegall/     Date: 04/01/2021
Signatory's Name: Karin Segall
Signatory's Position: Attorney of Record
Signature method: Signed directly within the form

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:    Karin Segall
   LEASON ELLIS LLP
   
   ONE BARKER AVENUE, FIFTH FLOOR
   WHITE PLAINS, New York 10601
Mailing Address:    Karin Segall
   LEASON ELLIS LLP
   ONE BARKER AVENUE, FIFTH FLOOR
   WHITE PLAINS, New York 10601
        
Serial Number: 90043365
Internet Transmission Date: Thu Apr 01 16:24:52 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202104011624525373
26-90043365-770308488efba1a6bcdd37135649
5f689cf296fab7abca1bd5896295660e7-N/A-N/
A-20210401162200702803