Response to Office Action

FORMULA 1

Formula One Licensing B.V.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88067367
LAW OFFICE ASSIGNED LAW OFFICE 122
MARK SECTION
MARK http://uspto.report/TM/88067367/mark.png
LITERAL ELEMENT FORMULA 1
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 037
DESCRIPTION
Building construction; vehicle repair; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations (refuelling and maintenance); mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of network systems (hardware); machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry; vehicle cleaning; drilling of wells; refuelling; retreading of tires; motor vehicle washing; repair of materials and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels; repair or maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations in the field of electronics, computing, communications and telecommunications; construction, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; vulcanization of tires (repair)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1036826
       FOREIGN REGISTRATION
       COUNTRY
Benelux
       FOREIGN REGISTRATION
       DATE
08/08/2018
       FOREIGN EXPIRATION DATE 08/07/2028
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 037
TRACKED TEXT DESCRIPTION
Building construction; vehicle repair; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations (refuelling and maintenance); vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of network systems (hardware); installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry; maintenance and repair for the oil industry machinery; vehicle cleaning; drilling of wells; refuelling; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials and sports equipment; repair of materials in the nature of vehicle repair and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair or maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; service station services; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations in the field of electronics, computing, communications and telecommunications; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; construction, repair, restoration, maintenance and installation services for industrial equipments; construction, such as construction supervision of industrial equipment, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; vulcanization of tires (repair); repair of tires by vulcanization
FINAL DESCRIPTION
Building construction; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry machinery; vehicle cleaning; drilling of wells; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials in the nature of vehicle repair and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; construction, such as construction supervision of industrial equipment, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; repair of tires by vulcanization
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1036826
       FOREIGN REGISTRATION
       COUNTRY
Benelux
       FOREIGN REGISTRATION
       DATE
08/08/2018
       FOREIGN EXPIRATION DATE 08/07/2028
SIGNATURE SECTION
RESPONSE SIGNATURE /Jill K. Tomlinson/
SIGNATORY'S NAME Jill K. Tomlinson
SIGNATORY'S POSITION Attorney of Record, New York Bar Member
SIGNATORY'S PHONE NUMBER 2127758700
DATE SIGNED 04/12/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Apr 12 18:50:57 EDT 2019
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20190412185057864305-8806
7367-620802e9f62f1d7c4f3b
c123d37637baae8285f77d9e0
62abfa501f7ad784d7ac67-N/
A-N/A-2019040512245948962
7



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. 88067367 FORMULA 1(Standard Characters, see http://uspto.report/TM/88067367/mark.png) 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 Building construction; vehicle repair; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations (refuelling and maintenance); mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of network systems (hardware); machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry; vehicle cleaning; drilling of wells; refuelling; retreading of tires; motor vehicle washing; repair of materials and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels; repair or maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations in the field of electronics, computing, communications and telecommunications; construction, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; vulcanization of tires (repair)
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1036826 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Building construction; vehicle repair; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations (refuelling and maintenance); vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of network systems (hardware); installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry; maintenance and repair for the oil industry machinery; vehicle cleaning; drilling of wells; refuelling; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials and sports equipment; repair of materials in the nature of vehicle repair and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair or maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; service station services; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations in the field of electronics, computing, communications and telecommunications; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; construction, repair, restoration, maintenance and installation services for industrial equipments; construction, such as construction supervision of industrial equipment, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; vulcanization of tires (repair); repair of tires by vulcanizationClass 037 for Building construction; vehicle repair services; vehicle maintenance; motor vehicle maintenance and repair; repair and maintenance of aircraft; vehicle polishing; vehicle service stations; mining extraction; vehicle greasing; installation, maintenance and repair of computer hardware; installation of wind power systems; installation of solar power systems; installation of hydropower systems; pipeline construction and maintenance; installation and maintenance of computer hardware network systems; machinery installation maintenance and repair; installations and repair of systems of gas; vehicle lubrication; maintenance and repair of power stations; maintenance and repair of vehicle tires; maintenance and repair for the oil industry machinery; vehicle cleaning; drilling of wells; refuelling services for vehicles and equipment; retreading of tires; motor vehicle washing; repair of materials in the nature of vehicle repair and sports equipment; repair and maintenance of automobiles, tractor trailer (tractors) and other utility vehicles; repair and assembly relating to the installation or dismantling and maintenance of tires for vehicle wheels, namely, vehicle tire maintenance and repair; repair and maintenance of machines and measuring instruments and test equipment or apparatus in relation to the distribution of power or control of power; automobile service station services; installation, maintenance and repair services of equipment, apparatus, devices and installations, all of the foregoing excluding computer software, in the field of electronics, computing, communications and telecommunications; construction, such as construction supervision of industrial equipment, repair, restoration, maintenance and installation services for industrial equipments; drilling services for oil and gas extraction; repair services of tires for vehicle wheels; services related to exploitation and production of oil, namely, rental of drilling rigs; building construction supervision; anti-rust treatment for vehicles; repair of tires by vulcanization
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1036826 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Jill K. Tomlinson/     Date: 04/12/2019
Signatory's Name: Jill K. Tomlinson
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 2127758700

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.

        
Serial Number: 88067367
Internet Transmission Date: Fri Apr 12 18:50:57 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904121850578
64305-88067367-620802e9f62f1d7c4f3bc123d
37637baae8285f77d9e062abfa501f7ad784d7ac
67-N/A-N/A-20190405122459489627



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