TEAS Request Reconsideration after FOA

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. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 87315018 GLASS ANALYTICS(Standard Characters, see http://uspto.report/TM/87315018/mark.png) has been amended as follows:

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

As the Examining Attorney will note, Applicant has amended its dates of first use of the mark for the Class 42 services, accompanied by a supporting declaration. Upon further investigation, Applicant determined that it had been providing its Class 42 services since 2011. The Examining Attorney will note that Applicant has deleted the Class 9 goods from the application. In response to the final refusal, Applicant has amended the application to claim acquired distinctiveness based on five year's use of the mark in commerce.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, and for generating reports relating to the foregoing; Downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, for calculating and comparing energy cost and consumption associated with such products based on characteristics of the glass, installation thereof, building parameters and site location, and for generating reports relating to the foregoing

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, and for generating reports relating to the foregoing; Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, for calculating and comparing energy cost and consumption associated with such products based on characteristics of the glass, installation thereof, building parameters and site location, and for generating reports relating to the foregoing
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 00/00/2013 and first used in commerce at least as early as 00/00/2013 , and is now in use in such commerce.

Proposed: Class 042 for Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, and for generating reports relating to the foregoing; Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, for calculating and comparing energy cost and consumption associated with such products based on characteristics of the glass, installation thereof, building parameters and site location, and for generating reports relating to the foregoing
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 00/00/2011 and first used in commerce at least as early as 00/00/2011 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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: /Michelle L. Visser/      Date: 05/07/2018
Signatory's Name: Michelle L. Visser
Signatory's Position: Attorney, Michigan bar member
Signatory's Phone Number: 248-594-0644


Request for Reconsideration Signature
Signature: /Michelle L. Visser/     Date: 05/07/2018
Signatory's Name: Michelle L. Visser
Signatory's Position: Attorney, Michigan bar member

Signatory's Phone Number: 248-594-0644

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87315018
Internet Transmission Date: Mon May 07 20:25:34 EDT 2018
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XX-201805072025348
27444-87315018-6109a7a5fc163a680f748b286
5faf4f2c1f5af7737152d87a70a1bc59e8e1dd-N
/A-N/A-20180507201655410944