Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87394439 ESSENTIALS(Standard Characters, see http://uspto.report/TM/87394439/mark.png) has been amended as follows:

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

Applicant disagrees that the mark shown on the specimen already of record differs from the mark shown in the drawing. The specimen uses ESSENTIALS as an adjective to modify "Toolkit," which is a reference to the online, non-downloadable software tools offered under the mark. ESSENTIALS is properly used as an adjective and trademark for the online tools offered by Applicant (the "toolkit"). The word "THE" preceding "ESSENTIALS" further enforces the quality of ESSENTIALS as an adjective and trademark for "the toolkit." The mark would be viewed by consumers as ESSENTIALS, being used to identify "the toolkit" comprising online non-downloadable software tools that enable users to manage and monitor real estate-related marketing, customers, prospects, transactions, information and business operations.

Applicant respectfully requests that the specimen be accepted.

While maintaining its claim that the specimen of record is appropriate evidence of trademark use, Applicant submits herewith an additional/substitute specimen for further consideration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing online non-downloadable software tools that enable users to manage and monitor real estate-related marketing, customers, prospects, transactions, information and business operations; Providing an interactive Internet website that enables users to manage and monitor a real estate business and real estate information, access and track information about real estate marketing, advertising, and sales leads, generate reports, and track and manage real estate listings; Providing an internet website portal featuring technology that allows real estate professionals to track and monitor their real estate business and real estate advertising, access sales and marketing tools, review listings and leads, generate reports, monitor and manage real estate advertising, and manage leads, clients and potential clients
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.

In International Class 042, the mark was first used at least as early as 05/23/2019 and first used in commerce at least as early as 05/23/2019 .

Proposed: Class 042 for Providing online non-downloadable software tools that enable users to manage and monitor real estate-related marketing, customers, prospects, transactions, information and business operations; Providing an interactive Internet website that enables users to manage and monitor a real estate business and real estate information, access and track information about real estate marketing, advertising, and sales leads, generate reports, and track and manage real estate listings; Providing an internet website portal featuring technology that allows real estate professionals to track and monitor their real estate business and real estate advertising, access sales and marketing tools, review listings and leads, generate reports, monitor and manage real estate advertising, and manage leads, clients and potential clients
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.

In International Class 042, the mark was first used at least as early as 05/23/2019 . and first used in commerce at least as early as 05/23/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of website images .
"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:
SPU0-7387154191-20191003154138955121_._2019-10-03_Substitute_Specimen.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

The applicant's current attorney information: Bradley P. Hartman. Bradley P. Hartman of HARTMAN TITUS PLC, is located at

      SUITE 101
      3507 N. CENTRAL AVE.
      PHOENIX, Arizona 85012-2121
      US
The docket/reference number is 1202.01.07.

The phone number is 480-659-0019.

The fax number is 480-659-3304.

The email address is trademarks@hartmantitus.com

The applicants proposed attorney information: Bradley P. Hartman. Bradley P. Hartman of HARTMAN TITUS PLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 101
      3507 N. CENTRAL AVE.
      PHOENIX, Arizona 85012-2121
      United States
The docket/reference number is 1202.01.07.

The phone number is 480-659-0019.

The fax number is 480-659-3304.

The email address is trademarks@hartmantitus.com

Bradley P. Hartman submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BRADLEY P. HARTMAN. BRADLEY P. HARTMAN of HARTMAN TITUS PLC, is located at

      SUITE 101
      3507 N. CENTRAL AVE.
      PHOENIX, Arizona 85012-2121
      US
The docket/reference number is 1202.01.07.

The phone number is 602-235-0500.

The fax number is 888-506-6572.

The email address is trademarks@hartmantitus.com; bhartman@hartmantitus.com

The applicants proposed correspondence information: Bradley P. Hartman. Bradley P. Hartman of HARTMAN TITUS PLC, is located at

      SUITE 101
      3507 N. CENTRAL AVE.
      PHOENIX, Arizona 85012-2121
      United States
The docket/reference number is 1202.01.07.

The phone number is 480-659-0019.

The fax number is 480-659-3304.

The email address is trademarks@hartmantitus.com; bhartman@hartmantitus.com

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: /bradley p hartman/      Date: 10/03/2019
Signatory's Name: Bradley P. Hartman
Signatory's Position: Attorney of record, Arizona bar member
Signatory's Phone Number: 602-759-7459


Response Signature
Signature: /bradley p hartman/     Date: 10/03/2019
Signatory's Name: Bradley P. Hartman
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 602-759-7459

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:    BRADLEY P. HARTMAN
   HARTMAN TITUS PLC
   SUITE 101
   3507 N. CENTRAL AVE.
   PHOENIX, Arizona 85012-2121
Mailing Address:    Bradley P. Hartman
   HARTMAN TITUS PLC
   SUITE 101
   3507 N. CENTRAL AVE.
   PHOENIX, Arizona 85012-2121
        
Serial Number: 87394439
Internet Transmission Date: Thu Oct 03 15:45:11 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019100315451157
0338-87394439-610584ebdbb61a7c2abb121c72
28a506d4576535cf4fb7fb4e41dc461efa5-N/A-
N/A-20191003154138955121