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

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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. 90112292 DEFENDER(Standard Characters, see http://uspto.report/TM/90112292/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 022 for non-rigid liners for intermediate bulk containers, where the liners reside between the intermediate bulk containers and the contents of the intermediate bulk containers, for use in the food, paint and coating industries

Applicant hereby adds the following class of goods/services to the application:
New: Class 020 (Original Class: 022 ) for non-rigid, plastic inserts for use as intermediate bulk container liners, placed between the intermediate bulk containers and the contents of the intermediate bulk containers, for use in the food, paint and coating industries
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


Applicant hereby adds the following class of goods/services to the application:
New: Class 022 for non-rigid, disposable liners for intermediate bulk containers, placed between the intermediate bulk containers and the contents of the intermediate bulk containers, for use in the food, paint and coating industries
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


ADDITIONAL STATEMENTS
Miscellaneous Statement
In the outstanding Office Action, the Examining Attorney: (1) noted that the Examining Attorney has searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d); (2) indicated that the application identifies goods that are classified in at least two classes, but Applicant submitted a fee sufficient for only one class, and indicated that Applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class; and (3) indicated that the identification of goods is indefinite and must be clarified because the wording could include goods that may be classified in more than one international class. In response, Applicant has now amended its identification of the goods and its classification of the goods. On account of the foregoing amendment and the following remarks, Applicant respectfully submits that this application is now in condition for allowance. More particularly, with respect to Item (1) above, Applicant wishes to thank the Examining Attorney for the determination that there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d). With respect to Items (2) and (3) above, Applicant has now amended its identification of the goods and its classification of the goods, adopting the Examining Attorney's suggested wording, so that the identification of the goods and the classification of the goods now read: "non-rigid, plastic inserts for use as intermediate bulk container liners, placed between the intermediate bulk containers and the contents of the intermediate bulk containers, for use in the food, paint and coating industries" in International Class 20; and "non-rigid, disposable liners for intermediate bulk containers, placed between the intermediate bulk containers and the contents of the intermediate bulk containers, for use in the food, paint and coating industries" in International Class 22. In addition, Applicant is now paying the filing fee for one additional class. Accordingly, Applicant believes that its amended identification of the goods and the classification of the goods complies with the Examining Attorney's requirements and are now in an acceptable form, and that all of the necessary filing fees have been paid. In view of the foregoing, Applicant respectfully submits that this application is in condition for allowance, and reconsideration thereof is respectfully requested. Thank you.

Correspondence Information (current):
      MARK J. PANDISCIO
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@pandisciolaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is CDF/TM-35.
Correspondence Information (proposed):
      Mark J. Pandiscio
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@pandisciolaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is CDF/TM-35.

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 $350 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: /Aisling E. Altidore/      Date: 02/03/2021
Signatory's Name: Aisling E. Altidore
Signatory's Position: Attorney for Applicant, Massachusetts Bar member
Signatory's Phone Number: 781-290-0060

Signature method: Signed directly within the form

Response Signature
Signature: /Aisling E. Altidore/     Date: 02/03/2021
Signatory's Name: Aisling E. Altidore
Signatory's Position: Attorney for Applicant, Massachusetts Bar member

Signatory's Phone Number: 781-290-0060 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:    MARK J. PANDISCIO
   PANDISCIO & PANDISCIO
   
   436 BOSTON POST ROAD
   WESTON, Massachusetts 02493
Mailing Address:    Mark J. Pandiscio
   PANDISCIO & PANDISCIO
   436 BOSTON POST ROAD
   WESTON, Massachusetts 02493
        
PAYMENT: 90112292
PAYMENT DATE: 02/03/2021
        
Serial Number: 90112292
Internet Transmission Date: Wed Feb 03 11:41:47 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021020311414732
4916-90112292-760869fc8adcfb5452e276526c
af3eda74a8f249e55a2e936d6da92113331-CC-4
1441538-20210203113326202150