Response to Office Action

PROLIFT

Toyota Material Handling Midwest, Inc.

Response to Office Action

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 86538320
LAW OFFICE ASSIGNED LAW OFFICE 115
MARK SECTION
MARK FILE NAME http://tmng-al.gov.uspto.report/resting2/api/img/86538320/large
LITERAL ELEMENT PROLIFT
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
Color is not claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the literal element PROLIFT sitting atop a square representing a pallet that appears to be being lifted by the forks of a forklift; the element PROLIFT is angled so that "PRO" sits at a right angle to "LIFT" atop the design.
GOODS AND/OR SERVICES SECTION (037)(current)
INTERNATIONAL CLASS 037
DESCRIPTION
Maintenance and repair of lift trucks and rental services for such goods
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 07/30/1990
        FIRST USE IN COMMERCE DATE At least as early as 07/30/1990
GOODS AND/OR SERVICES SECTION (037)(proposed)
INTERNATIONAL CLASS 037
TRACKED TEXT DESCRIPTION
Maintenance and repair of lift trucks and rental services for such goods; Maintenance and repair of lift trucks
FINAL DESCRIPTION Maintenance and repair of lift trucks
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 07/30/1990
       FIRST USE IN COMMERCE DATE At least as early as 07/30/1990
GOODS AND/OR SERVICES SECTION (042)(no change)
GOODS AND/OR SERVICES SECTION (039)(class added)
INTERNATIONAL CLASS 039
DESCRIPTION Rental of fork lift trucks
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 07/30/1990
        FIRST USE IN COMMERCE DATE At least as early as 07/30/1990
       STATEMENT TYPE "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].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILE SPN0-10431463-20151120111814026877_._Forklift_Rental___ProLift.pdf
       CONVERTED PDF FILE(S)
       (1 page)
\\TICRS\EXPORT16\IMAGEOUT16\865\383\86538320\xml5\ROA0002.JPG
       SPECIMEN DESCRIPTION Screenshot of Applicant's website showing use of mark prominently displayed in connection with the services
ADDITIONAL STATEMENTS SECTION
ACTIVE PRIOR REGISTRATION(S) The applicant claims ownership of active prior U.S. Registration Number(s) 1720722 and 1700839.
PAYMENT SECTION
NUMBER OF CLASSES 1
FEE PER CLASS 275
TOTAL FEES DUE 275
SIGNATURE SECTION
DECLARATION SIGNATURE /LLeitner/
SIGNATORY'S NAME Lorie Leitner
SIGNATORY'S POSITION Sales and Marketing Manager
SIGNATORY'S PHONE NUMBER 502-540-2368
DATE SIGNED 11/20/2015
RESPONSE SIGNATURE /LLeitner/
SIGNATORY'S NAME Lorie Leitner
SIGNATORY'S POSITION Marketing Manager
SIGNATORY'S PHONE NUMBER 502.267.2565
DATE SIGNED 11/20/2015
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Nov 20 13:17:34 EST 2015
TEAS STAMP USPTO/ROA-XXX.X.XX.XX-201
51120131734749190-8653832
0-540f153b99715fea358b5e4
199dafb112a926658bd8f988f
b3df88322d8edd751c1-CC-12
803-20151120111814026877



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. 86538320 PROLIFT (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86538320/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Maintenance and repair of lift trucks and rental services for such goods
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 07/30/1990 and first used in commerce at least as early as 07/30/1990 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Maintenance and repair of lift trucks and rental services for such goods; Maintenance and repair of lift trucksClass 037 for Maintenance and repair of lift trucks
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 07/30/1990 and first used in commerce at least as early as 07/30/1990 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 039 for Rental of fork lift trucks
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 07/30/1990 and first used in commerce at least as early as 07/30/1990 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 039 . The specimen(s) submitted consists of Screenshot of Applicant's website showing use of mark prominently displayed in connection with the services .
"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:
SPN0-10431463-20151120111814026877_._Forklift_Rental___ProLift.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 1720722 and 1700839.


FEE(S)
Fee(s) in the amount of $275 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: /LLeitner/      Date: 11/20/2015
Signatory's Name: Lorie Leitner
Signatory's Position: Sales and Marketing Manager
Signatory's Phone Number: 502-540-2368


Response Signature
Signature: /LLeitner/     Date: 11/20/2015
Signatory's Name: Lorie Leitner
Signatory's Position: Marketing Manager

Signatory's Phone Number: 502.267.2565

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
RAM Sale Number: 86538320
RAM Accounting Date: 11/20/2015
        
Serial Number: 86538320
Internet Transmission Date: Fri Nov 20 13:17:34 EST 2015
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201511201317347491
90-86538320-540f153b99715fea358b5e4199da
fb112a926658bd8f988fb3df88322d8edd751c1-
CC-12803-20151120111814026877


Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]


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