PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
85724666 |
LAW OFFICE ASSIGNED |
LAW OFFICE 109 |
MARK SECTION |
MARK |
http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85724666 |
LITERAL ELEMENT |
UVISION |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
In Response to the Office Action dated December 24, 2012, Applicant has amended the identification of goods to add a new Class 16 for: “textured and
colored printed sample sheets of plastic and paper showing landscaping paver patterns, colors and textures.” An additional filing fee for this new Class is submitted
herewith. Class 42 has been amended to recite “landscape architectural design services.” In this respect, the Applicant is
involved with designs incorporating paving stones, concrete block retaining walls, pool decks, stone patios, stone planters, and the like. Accordingly, it is
respectfully submitted that “architectural” is the appropriate description for Applicant’s design services.
With respect to the Examining Attorney’s inquiry regarding the significance of “UVISION,” to the best of Applicant’s knowledge, “UVISION” and “U” have
no meaning or significance in the software construction and landscaping fields and industries; have no meaning or significance (apart from its trademark significance) as applied to the goods and
services described in the application, and are not a “term of art” within Applicant’s industry.
With respect to the filing basis, Applicant hereby deletes Section 44(e) as a basis for registration, but still wishes to retain the Section 44(d)
priority filing date. Applicant requests that the mark be approved for publication based upon the Section 1(a) basis for Class 9 and the Section 1(b) basis for
the other classes.
Lastly, the U.S. Examining Attorney is hereby advised that the Applicant, Hengestone Holdings, Inc., has an effective, commercial establishment in
Toronto, Canada as of the filing date of the priority, Canadian application. Applicant respectfully submits that Applicant can claim Canada as a country of
origin.
It is believed that the foregoing amendments and comments place the application in condition for allowance, and favorable action is therefore
respectfully requested.
|
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture design, namely,
fireplaces, kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains; textured
and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and textures |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/31/2010 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/31/2010 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture
design, namely, fireplaces, kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and
fountains; textured and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and textures |
FINAL DESCRIPTION |
computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture design, namely,
fireplaces, kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 01/31/2010 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/31/2010 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
landscape contractor referral services; marketing services, namely, organization of block parties and open house events regarding new
landscape construction projects for residential, commercial and industrial properties |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
landscape contractor referral services; marketing services, namely, organization of block parties and open house events regarding new
landscape construction projects for residential, commercial and industrial properties |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (037)(current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
landscape construction services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (037)(proposed) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
landscape construction services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
landscape design services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
landscape design services; landscape architectural design
services |
FINAL DESCRIPTION |
landscape architectural design services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (044)(current) |
INTERNATIONAL CLASS |
044 |
DESCRIPTION |
online design center services, namely, provision of a website providing information, planning services and landscape design services to
landscaping contractors, home owners and business managers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (044)(proposed) |
INTERNATIONAL CLASS |
044 |
DESCRIPTION |
online design center services, namely, provision of a website providing information, planning services and landscape design services to
landscaping contractors, home owners and business managers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
GOODS AND/OR SERVICES SECTION (016)(class added) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
textured and colored printed sample sheets of plastic and paper showing landscaping paver patterns, colors and textures |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1567899 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
03/08/2012 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of
priority. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
FEE PER CLASS |
325 |
TOTAL FEES DUE |
325 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/mark kusner/ |
SIGNATORY'S NAME |
Mark Kusner |
SIGNATORY'S POSITION |
Attorney of record, Ohio bar member |
SIGNATORY'S PHONE NUMBER |
440-684-1090 |
DATE SIGNED |
02/26/2013 |
RESPONSE SIGNATURE |
/mark kusner/ |
SIGNATORY'S NAME |
Mark Kusner |
SIGNATORY'S POSITION |
Attorney of record, Ohio bar member |
SIGNATORY'S PHONE NUMBER |
440-684-1090 |
DATE SIGNED |
02/26/2013 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Feb 26 17:09:45 EST 2013 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XX.XXX-2
0130226170945566923-85724
666-500851f36a87356e918b0
c0687849a373705fc2d4e194e
b72e57ed259cfad7d89f8-CC-
4890-20130226165926485533 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
85724666 UVISION(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85724666) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In Response to the Office Action dated December 24, 2012, Applicant has amended the identification of goods to add a new Class 16 for: “textured and
colored printed sample sheets of plastic and paper showing landscaping paver patterns, colors and textures.” An additional filing fee for this new Class is submitted
herewith. Class 42 has been amended to recite “landscape architectural design services.” In this respect, the Applicant is
involved with designs incorporating paving stones, concrete block retaining walls, pool decks, stone patios, stone planters, and the like. Accordingly, it is
respectfully submitted that “architectural” is the appropriate description for Applicant’s design services.
With respect to the Examining Attorney’s inquiry regarding the significance of “UVISION,” to the best of Applicant’s knowledge, “UVISION” and “U” have
no meaning or significance in the software construction and landscaping fields and industries; have no meaning or significance (apart from its trademark significance) as applied to the goods and
services described in the application, and are not a “term of art” within Applicant’s industry.
With respect to the filing basis, Applicant hereby deletes Section 44(e) as a basis for registration, but still wishes to retain the Section 44(d)
priority filing date. Applicant requests that the mark be approved for publication based upon the Section 1(a) basis for Class 9 and the Section 1(b) basis for
the other classes.
Lastly, the U.S. Examining Attorney is hereby advised that the Applicant, Hengestone Holdings, Inc., has an effective, commercial establishment in
Toronto, Canada as of the filing date of the priority, Canadian application. Applicant respectfully submits that Applicant can claim Canada as a country of
origin.
It is believed that the foregoing amendments and comments place the application in condition for allowance, and favorable action is therefore
respectfully requested.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture design, namely, fireplaces, kitchen cabinets, kitchen
counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains; textured and colored sample sheets of plastic
and paper showing landscaping paver patterns, colors and textures
Original Filing Basis:
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 01/31/2010 and first used in commerce at least as early as 01/31/2010 , and
is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture design, namely, fireplaces,
kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains;
textured and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and texturesClass 009 for computer software for three dimensional
landscape design, paver design, retaining wall design, and outdoor fixture design, namely, fireplaces, kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas,
patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains
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 01/31/2010 and first used in commerce at least as early as 01/31/2010 , and
is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for landscape contractor referral services; marketing services, namely, organization of block parties and open house events regarding new landscape construction projects for
residential, commercial and industrial properties
Original Filing Basis:
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.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed: Class 035 for landscape contractor referral services; marketing services, namely, organization of block parties and open house events regarding new landscape construction projects
for residential, commercial and industrial properties
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for landscape construction services
Original Filing Basis:
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.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed: Class 037 for landscape construction services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for landscape design services
Original Filing Basis:
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.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed:
Tracked Text Description: landscape design services;
landscape architectural design servicesClass 042 for landscape
architectural design services
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for online design center services, namely, provision of a website providing information, planning services and landscape design services to landscaping contractors, home
owners and business managers
Original Filing Basis:
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.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed: Class 044 for online design center services, namely, provision of a website providing information, planning services and landscape design services to landscaping contractors, home
owners and business managers
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
Applicant hereby adds the following class of goods/services to the application:
New: Class 016 for textured and colored printed sample sheets of plastic and paper showing landscaping paver patterns, colors and textures
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1567899 filed 03/08/2012]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority.
FEE(S)
Fee(s) in the amount of $325 is being submitted.
SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company
or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and
2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is
seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing
date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37
C.F.R. Sec. 2.44. 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. Section 1001, and that such
willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the
applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes
applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either
in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake,
or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and
all statements in the original application and this submission made on information and belief are believed to be true.
Signature: /mark kusner/ Date: 02/26/2013
Signatory's Name: Mark Kusner
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 440-684-1090
Response Signature
Signature: /mark kusner/ Date: 02/26/2013
Signatory's Name: Mark Kusner
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 440-684-1090
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
RAM Sale Number: 85724666
RAM Accounting Date: 02/27/2013
Serial Number: 85724666
Internet Transmission Date: Tue Feb 26 17:09:45 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2013022617094556
6923-85724666-500851f36a87356e918b0c0687
849a373705fc2d4e194eb72e57ed259cfad7d89f
8-CC-4890-20130226165926485533