Extension of Time to File SOU

PTO- 1581

Approved for use through 03/31/2024. OMB 0651-0054

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- 1581

Approved for use through 03/31/2024. OMB 0651-0054

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

SOU Extension Request
(15 U.S.C. Section 1051(d))

To the Commissioner for Trademarks:

MARK: WORX (see, http://uspto.report/TM/88038189/mark.png)
SERIAL NUMBER: 88038189

OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: Positec Group Limited, having an address of
      Level 54, Hopewell Centre
      183 Queen's Road East
      Hong Kong Adm. Region, 0
      China
      Email: XXXX
Proposed: Positec Group Limited, having an address of
      Level 54, Hopewell Centre
      183 Queen's Road East
      Hong Kong Adm. Region, 0
      China
      Phone:
      Fax:
      Email: XXXX

The owner requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application.    The Notice of Allowance mailing date was 08/06/2019.

For International Class 006:
Current identification: Tool boxes of metal, empty; ladders of metal; metal clamps; workbench accessories, namely, metal clamps; replacement parts for the aforesaid goods

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 007:
Current identification: Metalworking machines; woodworking machines, namely, planers, shovels, drills, buffers, routers; cutting machines; power-driven wrenches; electric hammers; power-operated sharpeners; Power-operated tools, namely, buffers; Power tools, namely, routers; Power tools, namely, grinders; Power tools, namely, sanders; Power tools, namely, polishers; Power tools, namely, planers; electric hot air glue guns; impact wrenches; tool grinding machines; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; Power tools, namely, profile sanders; power-operated spray guns; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; electric glue guns; fans for machine engines; spray guns for paint; pneumatically operated tire inflation machine; Air-operated power tools, namely, impact drills; Air-operated power tools, namely, hammer drills; Pneumatic shears; Power lawn and garden tools, namely, shredders; power-operated jig saws; Power-operated reciprocating saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for power screwdrivers; saw blades for power-operated compact circular saws; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for power-operated routers; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for power-operated sanders; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for power-operated sanders and angle grinders; machines and apparatus for cleaning surfaces using high pressure water; floor washing machines; high pressure washers; robotic high pressure washers; swimming pool cleaning machines; robotic swimming pool cleaner machines; tree pruner machines; chain saws; robotic lawnmowers; electric sweepers; power operated brushing machines; vacuum cleaners; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow throwers; power operated grass trimmers; power operated weed trimmers; robotic grass trimmers; robotic weed trimmer; electric lawn trimmers; robotic lawn trimmer; power-operated lawn and garden string trimmers; robotic lawn and garden string trimmer; robotic watering machines for cleaning surfaces using high pressure water; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for lawnmowers; hoses for power-operated pressure cleaners

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: Metalworking machines; woodworking machines, namely, drills; cutting machines; electric hammers; Power-operated tools, namely, buffers; Power tools, namely, grinders; Power tools, namely, sanders; Power tools, namely, polishers; impact wrenches; oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; power-operated spray guns; brushes, electrically operated being parts of machines; bits for power drills; tool bits for machines; power-operated nailing guns; power-operated snow throwers; power operated car polisher; spray guns for paint; pneumatically operated tire inflation machine; Power lawn and garden tools, namely, shredders; power-operated jig saws; Power-operated reciprocating saws; Power-operated circular saws; power tool accessories, namely, drill bits for drills; screwdriver bits for power screwdrivers; saw blades for power-operated compact circular saws; sanding paper for power-operated sanders and oscillating multi-purpose tools; cut blade for oscillating multi-purpose power tool used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; machines and apparatus for cleaning surfaces using high pressure water; high pressure washers; swimming pool cleaning machines; tree pruner machines; chain saws; robotic lawnmowers; electric sweepers; power operated brushing machines; vacuum cleaners; power operated grass trimmers; power operated weed trimmers; electric lawn trimmers; power-operated lawn and garden string trimmers; power-operated garden tool accessories, namely, spools, edging wheels for grass trimmers; bars, chains, extension poles for chain saws; blades for lawnmowers; bags, leaf collection bags, gutter cleaning kits, inflators and air deflators for blowers; nozzles, brushes, soap bottles, water buckets for power-operated pressure cleaners; grass boxes for lawnmowers; hoses for power-operated pressure cleaners

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: woodworking machines, namely, planers, shovels, buffers, routers; power-driven wrenches; power-operated sharpeners; Power tools, namely, routers; Power tools, namely, planers; electric hot air glue guns; tool grinding machines; Power tools, namely, profile sanders; electric glue guns; fans for machine engines; Air-operated power tools, namely, impact drills; Air-operated power tools, namely, hammer drills; Pneumatic shears; cutting discs for compact power-operated circular saws; carbide rasps for oscillating multi-purpose power tools used for sanding, grinding, polishing, sharpening, rasping, sawing, and scraping; router bits for power-operated routers; power-operated grinding wheels, power-operated abrasive wheels for angle grinders; sanding sheets for power-operated sanders; polishing pads for power-operated sanders and oscillating multi tools; sanding pads for power-operated sanders and angle grinders; floor washing machines; robotic high pressure washers; robotic swimming pool cleaner machines; robotic cleaners, namely, robotic vacuum cleaners, robotic floor cleaning machines, robotic road sweeping machines, Multi-purpose robotic steam cleaners; brushes for vacuum cleaners; robotic snow throwers; robotic grass trimmers; robotic weed trimmer; robotic lawn trimmer; robotic lawn and garden string trimmer; robotic watering machines for cleaning surfaces using high pressure water

For International Class 008:
Current identification: Hand tools, namely, combined vice and workbench of metal; bench vices of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts, tool holders; vises; clamps

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: Hand tools, namely, combined vice and workbench of metal; accessories for hand held tools, namely, drill bits, screwdriver bits, tool holders; vises; clamps

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: bench vices of metal; accessories for hand held tools, namely, bits for hand drills; bit drivers for hand tools, saw blades, grinding wheels, sanding discs, abrading discs; tool belts

For International Class 009:
Current identification: Computer application software for mobile phones, namely, software for power operated tools and power operated lawn and garden tools, computer software for power operated tools and power operated lawn and garden tools, computer software applications for power operated tools and power operated lawn and garden tools, software for power operated tools and power operated lawn and garden tools; downloadable software for power operated tools and power operated lawn and garden tools; downloadable mobile applications for power operated tools and power operated lawn and garden tools; application software for smart phones for power operated tools and power operated lawn and garden tools; application software for mobile phones, tablets, laptops and computers for power operated tools and power operated lawn and garden tools; downloadable mobile and computer software for use with power tools and gardening tools, for use as a control system; remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for power operated tools and power operated lawn and garden tools; software for remote controls for power operated tools and power operated lawn and garden tools; remote control apparatus for garden tools and power tools; audio speakers, radios; lasers for measuring; measuring instrumentation and apparatus, namely, digitizers; carpenter's levels; safety goggles; protective ear covering shields; protective work gloves; gloves for protection against accidents; protective gloves for industrial use; clothing for protection against accidents, irradiation and fire

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 011:
Current identification: LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; LED work lights for construction settings; heat guns; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electric fans; electrically heated clothing

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: LED lighting fixtures for indoor and outdoor lighting applications; LED work lights for construction settings; heat guns; electric fans

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: LED light bulbs; electric portable cool boxes; air purifying apparatus and machines; water purifying apparatus and machines; filters for drinking water; water filtering apparatus; electrically heated clothing

For International Class 020:
Current identification: vice benches of metal being furniture

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 035:
Current identification: online retail store services featuring lawn and garden equipment and accessories, garden carts, multipurpose wheeled carriers, hand operated tools and accessories, workbenches and accessories, work support products and accessories, power operated tools and accessories, lighting products, batteries, battery chargers, battery packs, speakers, radios, protective clothing and equipment, measuring instruments and apparatus, purifying and filtering apparatus for water, air purifying apparatus, heat guns, electric fans and cool boxes, and electrically heated clothing

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: online retail store services featuring lawn and garden equipment and accessories, garden carts, multipurpose wheeled carriers, hand operated tools and accessories, workbenches and accessories, work support products and accessories, power operated tools and accessories, lighting products, batteries, battery chargers, battery packs, heat guns, electric fans

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: online retail store services featuring speakers, radios, protective clothing and equipment, measuring instruments and apparatus, purifying and filtering apparatus for water, air purifying apparatus, and cool boxes, and electrically heated clothing

For International Class 037:
Current identification: repair and maintenance services in the fields of lawn and garden equipment and accessories, garden carts, multipurpose wheeled carriers, hand operated tools and accessories, workbenches and accessories, work support products and accessories, power operated tools and accessories, lighting products, batteries, battery chargers, battery packs, speakers, radios, protective clothing and equipment, measuring instruments and apparatus, purifying and filtering apparatus for water, air purifying apparatus, heat guns, electric fans and cool boxes, and electrically heated clothing

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


The applicant has submitted a Request to Divide in paper or is filing a Request to Divide as part of the TEAS Allegation of Use form. This is the fourth extension request. The applicant has made the following ongoing efforts to use the mark in commerce on or in connection with each of those goods/services covered by the extension request: product or service research or development

A Statement of Use has already been submitted or is being submitted along with the Extension request as evidence that applicant believes that it has made valid use of the mark in commerce.   If the USPTO finds the Statement of Use to be fatally defective, the applicant requests additional time to file an amended or substitute Statement of Use.

Correspondence Information (current):
      Scot A. Duvall
      PRIMARY EMAIL FOR CORRESPONDENCE: sduvall@middletonlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Correspondence Information (proposed):
      Scot A. Duvall
      PRIMARY EMAIL FOR CORRESPONDENCE: sduvall@middletonlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED


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).





A fee payment in the amount of $1000 will be submitted with the form, representing payment for 8 classes.


Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization under Section 1(b) in the notice of allowance or as subsequently modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and 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.

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


Signature: /Scot A. Duvall/      Date Signed: 04/20/2021
Signatory's Name: Scot A. Duvall
Signatory's Position: Attorney of record, Kentucky bar member
Signatory's Phone: 502-625-2784
Signature method: Signed directly within the form

PAYMENT: 88038189
PAYMENT DATE: 04/20/2021

Serial Number: 88038189
Internet Transmission Date: Tue Apr 20 12:39:29 ET 2021
TEAS Stamp: USPTO/ESU-XX.XX.X.XXX-202104201239296453
07-88038189-7701915475c8f8e23a42132ab182
c93bb14d861c072817b8af56b1b3f523702-CC-3
9263413-20210420122316785797