TEAS Response to Suspension Inquiry

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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

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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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88071045 TERIC(Standard Characters, see http://uspto.report/TM/88071045/mark.png) has been amended as follows:

OTHER REASON
Applicant hereby amends the filing basis to Section 1(a) (use in commerce) rather than Section 44(e) (foreign registration). Applicant intends to retain the foreign priority claim. Applicant is submitting herewith specimens showing use in commerce.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Diving watches
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,882,236 filed 02/08/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 014 for Diving watches
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/23/2018 and first used in commerce at least as early as 05/28/2018, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 014. The specimen(s) submitted consists of photos of packaging for the goods.
"The substitute (or new, 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, 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].
Original PDF file:
SPU0-260164881049410fc519 dc63e2b4d08-2020120818562 8991924_._Specimen1.PDF
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPU0-260164881049410fc519 dc63e2b4d08-2020120818562 8991924_._Specimen2.PDF
Converted PDF file(s) (1 page)
Specimen File1

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,882,236 filed 02/08/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Shearwater Research Inc., a corporation of Canada, having an address of
      250-13155 Delf Place
      Richmond, BC, V6V2A2
      Canada
Proposed: Shearwater Research Inc., a corporation of Canada, having an address of
      250-13155 Delf Place
      Richmond, BC, V6V2A2
      Canada
      Email Address: XXXX
Correspondence Information (current):
      Adrian Jorgenson
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@westberglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Adrian Jorgenson
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@westberglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): derekwestberg@yahoo.com

The docket/reference number is 1898T07US.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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 amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU 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 application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; 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: for a trademark or service mark application, the applicant believes 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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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 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: /Derek J. Westberg/    Date: 12/08/2020
Signatory's Name: Derek J. Westberg, Esq.
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 6509682041

Response Suspension Inquiry Signature
Signature: /Derek J. Westberg/     Date: 12/08/2020
Signatory's Name: Derek J. Westberg, Esq.
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 6509682041

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:    Adrian Jorgenson
   Westberg Law Offices
   
   569 Clyde Ave Ste 530
   Mountain View, California
Mailing Address:    Adrian Jorgenson
   Westberg Law Offices
   569 Clyde Ave Ste 530
   Mountain View, California 94043
        
Serial Number: 88071045
Internet Transmission Date: Tue Dec 08 19:42:02 ET 2020
TEAS Stamp: USPTO/RSI-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXXX-20201208194202335587-88071045-7
50d82fe57aec42b599edc6ebf6db042f57bf1dc3
c904ee96511cf13d43798d-N/A-N/A-202012081
85628991924