PR-Teas-Response to Post Reg Office Act

PTO- 2302

Approved for use through 01/31/2025. OMB 0651-0055

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- 2302

Approved for use through 01/31/2025. OMB 0651-0055

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 for Post-Registration Matters

To the Commissioner for Trademarks:

Registration no. 4867126 VIVID(Standard Characters, see http://uspto.report/TM/86629807/mark.png) has been amended as follows:
RESPONSE TYPE Response to Office Action for Combined Declaration of Use and Incontestability under Sections 8 & 15.

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

Registrant asserts that Baker Hughes Holdings LLC, a Delaware limited liability company, is the proper party to file the Section 8 & 15 combined affidavit. On July 3, 2017, Baker Hughes Incorporated was converted to a Delaware limited liability company and named Baker Hughes, A GE Company, LLC. Then, on April 15, 2020, Baker Hughes, A GE Company, LLC changed its name to Baker Hughes Holdings LLC. Copies of the entity conversion and name change to Baker Hughes, A GE Company, LLC) and the subsequent name change to Baker Hughes Holdings KC were recorded with the USPTO Assignments Branch on June 16, 2023. In light of the above, Registrant asserts that the proper party filed the Declaration.

EVIDENCE
Evidence has been attached: Copies of the conversion and name change documents from the Delaware Secretary of State are attached for reference.
Original PDF file:
evi_1652256079-2023062120 4648730282_._BHI_to_BHGE_ Entity_Conversion.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_1652256079-2023062120 4648730282_._BHGE_to_BHH_ Name_Change.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

The owner/holder proposes to amend the following:

Current: Class 009

Electrical integrated control systems for use in the field of industrial water cooling and heating systems found in power plants, refineries, steel mills, petrochemical and other heavy industrial plants

Proposed: Class 009

Identification:

Electrical integrated control systems for use in the field of industrial water cooling and heating systems found in power plants, refineries, steel mills, petrochemical and other heavy industrial plants

The owner/holder hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of Screenshots from Registrant's website showing the mark along with the goods and ordering information. The first screenshot is the main page for the product offered under the VIVID mark. On that page are links to download the brochure provided to customers during the sales process (i.e., the specimen submitted with the Section 8 & 15). Also at the website it s link to contact the relevant person at Baker Hughes to assist with the sale of the product. As this product is highly specialized and not sold to the average American consumer, there is contact with the relevant sales team/experts at Baker Hughes who work with the customers during the sales process. Thus, registrant asserts that the substiture specimen provided herewith is point of sale material and not meerely advertising..
Original PDF file:
SPU0-1652256079-202306212 04648730282_._Website_-_V IVID_-_1.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-1652256079-202306212 04648730282_._Website_-_V IVID_-_2.pdf
Converted PDF file(s) ( 1 page) Specimen File1

Webpage URL: http://www.bakerhughes.com/processing-services/terminals-blending-and-transportation-services/water-treatment/cooling-water-treatment/vivid-smart-water-treatment-controller-industrial-water-treatment
Webpage Date of Access: 06/21/2023

Statement for proposed goods/services: "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce during the relevant period for filing the current declaration of use" OR "The attached specimen is a true copy of the specimen that was originally submitted with the declaration of use" [for an illegible specimen].

Correspondence Information
      Dyan M. House
      PRIMARY EMAIL FOR CORRESPONDENCE: dallastrademarks@bakermckenzie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipsu.officesupportSNow@bakermckenzie.com; ipsuSNow@bakermckenzie.com

      The docket/reference number is 50654608.

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 $100 is being submitted.

Declaration


To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.


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 this submission and the registration, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.


SIGNATURE(S)

Signature: /Dyan House/      Date: 06/21/2023
Signatory's Name: Dyan M. House
Signatory's Position: Attorney of record, Texas bar member
Signatory's Phone Number: 2149783000
Signature method: Signed directly within the form

Signature: /Dyan House/     Date: 06/21/2023
Signatory's Name: Dyan M. House
Signatory's Position: Attorney of record, Texas Bar Member

Signatory's Phone Number: 2149783000 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:    Dyan M. House
   Baker & McKenzie LLP
   
   1900 N. Pearl St., Suite 1500
   Dallas, Texas 75201
Mailing Address:    Dyan M. House
   Baker & McKenzie LLP
   1900 N. Pearl St., Suite 1500
   Dallas, Texas 75201
        
PAYMENT: 4867126
PAYMENT DATE: 06/21/2023
        
Serial Number: 86629807
Internet Transmission Date: Wed Jun 21 21:00:45 ET 2023
TEAS Stamp: USPTO/TRS-XXX.XXX.XX.XX-2023062121004621
4630-4867126-8507d025a591c3bb13d464d3ee1
98a376c3540b5762c7c36b5b053b65da3aa36-DA
-00457703-20230621204648730282