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. 90763246 ULTRA TECH QUALITY FUELS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9076324 6/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: ULTRA TECH QUALITY FUELS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9076324 6/large)
Proposed: ULTRA TECH QUALITY FUELS (Stylized and/or with Design, see mark)
The color(s) dark blue, light blue, white, yellow and gray is/are claimed as a feature of the mark.
The mark consists of the stylized wording ULTRA-TECH in white with the hyphen depicted by a yellow right facing arrow, with a light blue outline around the wording ULTRA-TECH and arrow, and the stylized wording QUALITY FUELS in yellow is centered below the wording ULTRA-TECH, there is a light blue triangular shape that is gradient in color below the wording QUALITY FUELS, the background appears in dark blue, there is a gray horizontal rectangular base.

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

Applicant submits this amendment in response to the non-final Office Action, dated March 4, 2022. In this regard, the Office indicates that a search of its database of registered and pending marks did not identify any conflicting marks that would bar registration of Applicant's mark under Trademark Act Section 2(d). The Office raises a few issues, which must be resolved to place the application in condition for acceptance for publication. These issues are addressed in turn, as follows. Applicant submits a replacement drawing of the mark, as well as an amended description of the mark and color claim, in response to the Office requirements. The amended drawing is submitted to resolve the duplicability issue raised by the Office. The description of the mark is amended to track directly with the description proposed in the Office Action. The color claim tracks directly with the proposed language in the Office Action. Applicant requests acceptance of the replacement drawing and amended description of the mark. Applicant submits an amended description of services for Class 35 consistent with the description proposed in the Office Action. The description of the goods in Class 4 and of the services in Class 37 remain as originally filed. Applicant requests acceptance of the description of goods and services. The application is being amended to include a disclaimer of "Quality Fuels" required by the Office. The disclaimer is being entered conditioned upon a complete reservation of Applicant's common law rights in the mark. This amendment places the application in condition for acceptance for publication. An early action to this effect is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 004 for Petroleum and petroleum-derived products for industrial and automotive use, namely, motor fuels; fuels; gasoline; gasoline blends with ethanol; diesel fuels
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:
Class 004 for Petroleum and petroleum-derived products for industrial and automotive use, namely, motor fuels; fuels; gasoline; gasoline blends with ethanol; diesel fuels
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


Applicant proposes to amend the following:

Current:
Class 035 for Retail stores services featuring convenience store items and gasoline; retail store services featuring hot and cold beverages, groceries, snacks, and hot and cold prepared sandwiches and other food; franchising, namely, rendering technical assistance in the establishment and/or operation of service stations and convenience retail stores
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Retail stores services featuring convenience store items and gasoline; retail store services featuring hot and cold beverages, groceries, snacks, and hot and cold prepared sandwiches and other food; franchising, namely, rendering technical assistance in the establishment and/or operation of service stations and convenience retail storesClass 035 for Retail stores services featuring convenience store items and gasoline; retail store services featuring hot and cold beverages, groceries, snacks, and hot and cold prepared sandwiches and other food
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


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

Correspondence Information (current):
      PHILIP J. FORET
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@stradley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pforet@stradley.com; tdandridge@stradley.com

The docket/reference number is 184753-5851.
Correspondence Information (proposed):
      Philip J. Foret
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@stradley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pforet@stradley.com; dfitzgibbon@stradley.com

The docket/reference number is 184753-5851.

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: /Philip J. Foret/     Date: 08/12/2022
Signatory's Name: Philip J. Foret
Signatory's Position: Attorney for Applicant, USPTO Reg. No. 51689
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:    PHILIP J. FORET
   STRADLEY RONON STEVENS & YOUNG, LLP
   
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
Mailing Address:    Philip J. Foret
   STRADLEY RONON STEVENS & YOUNG, LLP
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
        
Serial Number: 90763246
Internet Transmission Date: Fri Aug 12 16:00:20 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202208121600209
89328-90763246-8002a8f8f30aa393d88f9d844
22a6766c49a2a92ac958f02de671b93f72d7d2e1
-N/A-N/A-20220812155144945906