Response to Office Action

PTO- 1957

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

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

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

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90083769 BEYOND(Standard Characters, see http://uspto.report/TM/90083769/mark.png) has been amended as follows:

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

In the non-final office action, the Trademark Examining Attorney initially refused registration citing three issues, which are each addressed as follows: With respect to Likelihood of Confusion, the refusal to register under Section (d) was based upon two registrations for BEYOND and two registrations for BEYOND BY AERUS, all owned by Aerus LLC. However, the refusal was deemed to be a partial refusal as to the following goods: "Vacuum cleaners and power sweepers and accessories therefore, namely, bags and filters. Hand-held vacuum cleaners and vacuum dust filters. Stick vacuum cleaners" and "Powered handheld floor scrubbers, steam mops and hand held steamers for use on floors." In response, Applicant has revised the description of goods to delete all of the aforementioned goods. Therefore, it is respectfully submitted that confusion is not likely and requests that refusal for likelihood of confusion be withdrawn. 2. Identification of Goods: With respect to the Identification of Goods, several specific objections were noted, and the Trademark Examining Attorney proposed three separate identifications, one for goods in each of Class 3, 7 and 8. In response, the Applicant has adopted the description of goods suggested for Class 7, with certain exceptions. First, instead of the description of "Power rotary multi-tools, namely, grinders, sanders and woodworking machines, namely, ________ [further specify the ?woodworking machines? by their common commercial name(s)] and accessories therefore, namely, cut off discs and attachments for grinding, sanding and woodworking", the Applicant has revised the description to read --Power rotary multi-tools for sanding, grinding and cutting, and accessories therefore, namely, cut-off discs and attachments for grinding and sanding--. This revised description is consistent with but does not broaden or expand upon the original description, and clearly defines the goods in question. Second, per the above discussion, "Vacuum cleaners and power sweepers and accessories therefore, namely, bags and filters; Hand-held vacuum cleaners and vacuum dust filters; Stick vacuum cleaners; and Powered handheld floor scrubbers, steam mops and hand held steamers for use on floor" have been deleted. Finally, manual sprayers have been deleted. It is respectfully submitted that the current identification of goods is proper and Applicant requests that the refusal on the basis stated in the office action be withdrawn. 3. Multi-class Advisory and Requirements - 1(b) With respect to the multi-class advisory, the goods which remain in the Identification of Goods are all properly classified in Class 7. Therefore, separate classification of the goods and additional filing fees are not required and it is respectfully requested that the refusal on this basis be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for Power drills, namely, drills, drill/drivers, hammer drivers, impact drivers and hammer drills, and accessories therefor, namely, chucks, keyless chucks, chuck keys, wire wheels, drill bits, screwdriver bits, drive socket adaptors and bit tips. Power screwdrivers and screwdriver bits. Power saws, namely, circular saws, trim saws, jig saws, reciprocating saws, hand saws, chain saws, pruning saws, pole saws and accessories therefor, namely, replacement blades. Routers and router bits. Vaccum cleaners and power sweepers and accessories therefore, namely, bags and filters. Hand-held vacuum cleaners and vacuum dust filters. Stick vacuum cleaners. Air compressors, and parts therefor, namely, air hoses and inflation kits comprised of compressed air blow guns with nozzles and extensions therefor. Power oscillating multi-tools and accessories therefore, namely, attachments for sanding and grinding. Power rotary multi-tools and accessories therefore, namely, cut off discs and attachments for grinding, sanding and woodworking. Power planers and planer replacement blades. Power sanders, namely, belt sanders, finishing sanders, sheet sanders and orbital sanders and accessories therefore, namely, sandpaper. Power handheld appliances, namely, coffee grinders, food blenders, can openers, juicers, juice extractors, electric knives, food processors, food choppers, mixers and hand held mixers for household purposes. Lawnmowers, namely, walk behind lawn mowers, stand on riding lawn mowers, self-propelled lawn mowers and lawn tractors. Outdoor power equipment, namely, powered loppers, grass shears, string trimmers and spools and string therefor, leaf blowers, snowblowers/throwers, lawn trimmers and edgers, hedge trimmers, lawn and garden tillers, garden cultivator. Powered handheld floor scrubbers, steam mops and hand held steamers for use on floors. Pressure washers, namely, gas and electric-powered pressure washers for cleaning by the application of water under pressure and accessories therefor, namely, tips, nozzles, wands, hoses, guns, quick connects, wheels/reels, covers, extensions, nozzle-cleaning tools, detergent bottles and foaming apparatus, brushes, and parts and fittings. Manual and power sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers and chemical applicators for lawn and garden. Glue guns. Power operated staple guns. Composters
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: Power drills, namely, drills, drill/drivers, hammer drivers, impact drivers and hammer drills, and accessories therefor, namely, chucks, keyless chucks, chuck keys, wire wheels, drill bits, screwdriver bits, drive socket adaptors and bit tips. Power screwdrivers and screwdriver bits. Power saws, namely, circular saws, trim saws, jig saws, reciprocating saws, hand saws, chain saws, pruning saws, pole saws and accessories therefor, namely, replacement blades. Routers and router bits. Vaccum cleaners and power sweepers and accessories therefore, namely, bags and filters. Hand-held vacuum cleaners and vacuum dust filters. Stick vacuum cleaners. Air compressors, and parts therefor, namely, air hoses and inflation kits comprised of compressed air blow guns with nozzles and extensions therefor. Power oscillating multi-tools and accessories therefore, namely, attachments for sanding and grinding. Power rotary multi-tools and accessories therefore, namely, cut off discs and attachments for grinding, sanding and woodworking. Power planers and planer replacement blades. Power sanders, namely, belt sanders, finishing sanders, sheet sanders and orbital sanders and accessories therefore, namely, sandpaper. Power handheld appliances, namely, coffee grinders, food blenders, can openers, juicers, juice extractors, electric knives, food processors, food choppers, mixers and hand held mixers for household purposes. Lawnmowers, namely, walk behind lawn mowers, stand on riding lawn mowers, self-propelled lawn mowers and lawn tractors. Outdoor power equipment, namely, powered loppers, grass shears, string trimmers and spools and string therefor, leaf blowers, snowblowers/throwers, lawn trimmers and edgers, hedge trimmers, lawn and garden tillers, garden cultivator. Powered handheld floor scrubbers, steam mops and hand held steamers for use on floors. Pressure washers, namely, gas and electric-powered pressure washers for cleaning by the application of water under pressure and accessories therefor, namely, tips, nozzles, wands, hoses, guns, quick connects, wheels/reels, covers, extensions, nozzle-cleaning tools, detergent bottles and foaming apparatus, brushes, and parts and fittings. Manual and power sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers and chemical applicators for lawn and garden. Glue guns. Power operated staple guns. Composters; Power drills, namely, drills, drill/drivers, hammer drivers, impact drivers and hammer drills, and accessories therefor, namely, chucks, keyless chucks, chuck keys, wire wheels, drill bits, screwdriver bits, drive socket adaptors and bit tips; Power screwdrivers and screwdriver bits; Power saws, namely, circular saws, trim saws, jig saws, reciprocating saws, hand saws, chain saws, pruning saws, pole saws and accessories therefor, namely, replacement blades; Power tools, namely routers and router bits; Air compressors, and parts therefor, namely, air hoses and inflation kits comprised of compressed air blow guns with nozzles and extensions therefor; Power oscillating multi-tools for sanding and grinding and accessories therefore, namely, attachments for sanding and grinding; Power rotary multi-tools for sanding, grinding and cutting, and accessories therefore, namely, cut-off discs and attachments for grinding and sanding; Power planers and planer replacement blades; Power sanders, namely, belt sanders, finishing sanders, sheet sanders and orbital sanders and accessories therefore, namely kits comprised of sandpaper sheets configured to fit power-operated sanders; Power handheld appliances, namely, coffee grinders, food blenders, can openers, juicers, juice extractors, electric knives, food processors, food choppers, mixers and hand held mixers for household purposes; Lawnmowers, namely, walk behind lawn mowers, stand on riding lawn mowers, self-propelled lawn mowers and tractor towed agricultural implements, namely mowers; Outdoor power equipment, namely, powered loppers, grass shears, lawn and garden string trimmers and spools and string therefor, leaf blowers, snowblowers/throwers, lawn trimmers and edgers, hedge trimmers, lawn and garden tillers and garden cultivators; High pressure washers, namely, gas and electric-powered pressure washers for cleaning by the application of water under pressure and accessories therefor, namely, tips, nozzles, wands, hoses, guns, quick connects, wheels/reels, covers, extensions, nozzle-cleaning tools, detergent-holding bottles and foaming apparatus, brushes, and parts and replacement fittings; Power-operated sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers in the natures of chemical applicators for lawn and garden; Electric glue guns; Power operated staple guns; Machines, namely composters.Class 007 for Power drills, namely, drills, drill/drivers, hammer drivers, impact drivers and hammer drills, and accessories therefor, namely, chucks, keyless chucks, chuck keys, wire wheels, drill bits, screwdriver bits, drive socket adaptors and bit tips; Power screwdrivers and screwdriver bits; Power saws, namely, circular saws, trim saws, jig saws, reciprocating saws, hand saws, chain saws, pruning saws, pole saws and accessories therefor, namely, replacement blades; Power tools, namely routers and router bits; Air compressors, and parts therefor, namely, air hoses and inflation kits comprised of compressed air blow guns with nozzles and extensions therefor; Power oscillating multi-tools for sanding and grinding and accessories therefore, namely, attachments for sanding and grinding; Power rotary multi-tools for sanding, grinding and cutting, and accessories therefore, namely, cut-off discs and attachments for grinding and sanding; Power planers and planer replacement blades; Power sanders, namely, belt sanders, finishing sanders, sheet sanders and orbital sanders and accessories therefore, namely kits comprised of sandpaper sheets configured to fit power-operated sanders; Power handheld appliances, namely, coffee grinders, food blenders, can openers, juicers, juice extractors, electric knives, food processors, food choppers, mixers and hand held mixers for household purposes; Lawnmowers, namely, walk behind lawn mowers, stand on riding lawn mowers, self-propelled lawn mowers and tractor towed agricultural implements, namely mowers; Outdoor power equipment, namely, powered loppers, grass shears, lawn and garden string trimmers and spools and string therefor, leaf blowers, snowblowers/throwers, lawn trimmers and edgers, hedge trimmers, lawn and garden tillers and garden cultivators; High pressure washers, namely, gas and electric-powered pressure washers for cleaning by the application of water under pressure and accessories therefor, namely, tips, nozzles, wands, hoses, guns, quick connects, wheels/reels, covers, extensions, nozzle-cleaning tools, detergent-holding bottles and foaming apparatus, brushes, and parts and replacement fittings; Power-operated sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers in the natures of chemical applicators for lawn and garden; Electric glue guns; Power operated staple guns; Machines, namely composters.
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.

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

Correspondence Information (current):
      BRUCE SHAPIRO
      PRIMARY EMAIL FOR CORRESPONDENCE: bruce.shapiro@sbdinc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sue.haslbeck@sbdinc.com; rebecca.casciero@sbdinc.com

The docket/reference number is BEYOND/Amaz.
Correspondence Information (proposed):
      Bruce Shapiro
      PRIMARY EMAIL FOR CORRESPONDENCE: bruce.shapiro@sbdinc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sue.haslbeck@sbdinc.com; rebecca.casciero@sbdinc.com

The docket/reference number is BEYOND/Amaz.

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)
Response Signature
Signature: /bruceshapiro33120/     Date: 03/11/2021
Signatory's Name: Bruce Shapiro
Signatory's Position: Attorney of Record

Signatory's Phone Number: 410 630 9454 Signature method: Sent to third party for signature

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:    BRUCE SHAPIRO
   STANLEY BLACK & DECKER, INC.
   MR-045
   6201 GREENLEIGH AVENUE
   MIDDLE RIVER, Maryland 21286
Mailing Address:    Bruce Shapiro
   STANLEY BLACK & DECKER, INC.
   MR-045
   6201 GREENLEIGH AVENUE
   MIDDLE RIVER, Maryland 21286
        
Serial Number: 90083769
Internet Transmission Date: Thu Mar 11 11:57:57 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20210311115757334
762-90083769-770517d310cdd35f292668e7223
d14d1f77216e4c5b0191abd04684daee66-N/A-N
/A-20210311102053901951