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. 90145138 X STOCKPILE EXPRESS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9014513 8/large) has been amended as follows:

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

Applicant acknowledges the Nonfinal Office Action dated December 30, 2020 in the above-identified matter and hereby responds as follows: SPECIMEN: The Examining Attorney states that the specimen submitted to support the Applicant's trademark application is not acceptable as a webpage specimen because it lacks the required URL and/or date printed/accessed. 37 C.F.R. ?2.56(c); TMEP ??904.03(i), 1301.04(a). According to the Office Action, the Applicant may respond by either (i) submitting a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. ?2.20 or 28 U.S.C. ?1746, specifying the URL of the original webpage specimen and the date it was accessed or printed; or (ii) submitting a different specimen (a verified ?substitute? specimen), including the URL and date accessed/printed directly on the specimen itself or in a separate statement, that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application, supported by an affidavit to the effect that the substitute specimen was in use in commerce at least as early as the filing date of the application. Applicant submits the following Verified Statement, supported by a declaration under 37 C.F.R. ?2.20 or 28 U.S.C. ?1746: VERIFIED STATEMENT AND DECLARATION: The undersigned, Robert J. Diettrich, as the attorney of record for the Applicant, on oath, does hereby depose and state that the specimen submitted to support the Applicant's trademark application shows the mark as used on or in connection with the goods or services; that the URL of the original web-page specimen was: http://stockpileexpress.com/spxbf/cart.process+@SUBMIT=CHECKOUT; and that the date the web-page was accessed or printed was August 28, 2020. Applicant was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, at least as early as the filing date of the application. The mark has been in continuous use in commerce since the filing of the application, and is still in use in commerce on or in connection with all goods and/or services listed in the pending application. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. ?1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true. SUBSTITUTE SPECIMEN AND AFFIDAVIT: Applicant also submits herewith a different specimen (a verified ?substitute? specimen), which includes the URL and date accessed/printed directly on the specimen itself. The undersigned, Robert J. Diettrich, as the attorney of record for the Applicant, on oath, does hereby depose and state that the substitute specimen was in use in commerce at least as early as the filing date of the application. The mark has been in continuous use in commerce since the filing of the application, and is still in use in commerce on or in connection with all goods and/or services listed in the pending application. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. ?1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true. DISCLAIMER: The Examining Attorney states that Applicant must disclaim the wording ?EXPRESS? because it is merely descriptive of a feature of applicant?s services. Applicant hereby responds to this issue by submitting the following disclaimer: No claim is made to the exclusive right to use ?EXPRESS? apart from the mark as shown. Applicant hereby amends the application to include this disclaimer. /s/ Robert J Diettrich Robert J. Diettrich

EVIDENCE
Evidence has been attached: Substitute specimen, consisting of webpage screenshot
Original PDF file:
evi_3897775-2021010510405 2912120_._pile_Express_Su bstitute_Specimen_Webpage _Screenshot_01042021.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Wholesale store and wholesale distributorship services featuring plumbing, heating, HVAC, refrigeration, LP gas, fire protection, and industrial supplies, pipe, valves and fittings, industrial plastics, building controls, water systems, commercial and industrial pumps, and high purity process components
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/23/2020 and first used in commerce at least as early as 06/23/2020 , and is now in use in such commerce.


Proposed:
Class 035 for Wholesale store and wholesale distributorship services featuring plumbing, heating, HVAC, refrigeration, LP gas, fire protection, and industrial supplies, pipe, valves and fittings, industrial plastics, building controls, water systems, commercial and industrial pumps, and high purity process components
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/23/2020 and first used in commerce at least as early as 06/23/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of Substitute specimen consisting of screenshot of webpage.
"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:
SPU0-3897775-202101051040 52912120_._pile_Express_S ubstitute_Specimen_Webpag e_Screenshot_01042021.pdf
Converted PDF file(s) ( 1 page) Specimen File1

Webpage URL: http://stockpileexpress.com/spxbf/cart.process+@SUBMIT=CHECKOUT
Webpage Date of Access: 01/04/2021



ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "EXPRESS" apart from the mark as shown.

Correspondence Information (current):
      ROBERT J. DIETTRICH
      PRIMARY EMAIL FOR CORRESPONDENCE: rdiettrich@davismalm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 15115-1.
Correspondence Information (proposed):
      Robert J. Diettrich
      PRIMARY EMAIL FOR CORRESPONDENCE: rdiettrich@davismalm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 15115-1.

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

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: /rjd/      Date: 01/05/2021
Signatory's Name: Robert J. Diettrich
Signatory's Position: Attorney of record, Massachusetts Bar member
Signatory's Phone Number: 6175893861

Signature method: Signed directly within the form

Response Signature
Signature: /rjd/     Date: 01/05/2021
Signatory's Name: Robert J. Diettrich
Signatory's Position: Attorney of record, Massachusetts Bar member

Signatory's Phone Number: 6175893861 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:    ROBERT J. DIETTRICH
   DAVIS, MALM & D'AGOSTINE, P.C.
   
   ONE BOSTON PLACE, SUITE 3700
   BOSTON, Massachusetts 02108
Mailing Address:    Robert J. Diettrich
   DAVIS, MALM & D'AGOSTINE, P.C.
   ONE BOSTON PLACE, SUITE 3700
   BOSTON, Massachusetts 02108
        
Serial Number: 90145138
Internet Transmission Date: Tue Jan 05 11:01:55 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2021010511015592916
7-90145138-7606a6a55ce5f9a72a077d0bf12db
d3183ab5c33ef8d06bb0ef2ffdc8de6b79ece7-N
/A-N/A-20210105104052912120