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. 88093247 PROTERRA (Stylized and/or with Design, see http://uspto.report/TM/88093247/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 009 for energy storage and electric charging systems and infrastructure, namely, charging appliances for rechargeable equipment and energy storage appliances for rechargeable equipment and software for controlling rechargeable equipment charging appliances and energy storage appliances for rechargeable equipment for heavy duty electric vehicles; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage appliances, batteries and charging stations for electric vehicles, electronic control devices, software and electronic controls for controlling electric engines, electronic systems, and fuel systems of heavy duty vehicles, for inputting and management of tariff data and schedules, electric equipment for motor vehicles, namely, power supplies and controllers, high voltage and low voltage power regulator systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems comprised of air flow sensors electrical and signal integration components of high voltage and low voltage systems for heavy duty vehicles, namely, electronic circuits
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.

Proposed:
Tracked Text Description: energy storage and electric charging systems and infrastructure, namely, charging appliances for rechargeable equipment and energy storage appliances for rechargeable equipment and software for controlling rechargeable equipment charging appliances and energy storage appliances for rechargeable equipment for heavy duty electric vehicles; Energy storage and electric charging systems and infrastructure, namely, charging appliances for rechargeable equipment and energy storage appliances for rechargeable equipment in the form of batteries and software for controlling rechargeable equipment, charging appliances, and energy storage appliances and for rechargeable equipment for heavy duty electric vehicles; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage appliances, batteries and charging stations for electric vehicles, electronic control devices, software and electronic controls for controlling electric engines, electronic systems, and fuel systems of heavy duty vehicles, for inputting and management of tariff data and schedules, electric equipment for motor vehicles, namely, power supplies and controllers, high voltage and low voltage power regulator systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems comprised of air flow sensors electrical and signal integration components of high voltage and low voltage systems for heavy duty vehicles, namely, electronic circuits; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage batteries and charging stations for electric vehicles, electronic control devices, software and electronic controls for controlling electric engines, electronic systems, and fuel systems of heavy duty vehicles, for inputting and management of tariff data and schedules, electric equipment for motor vehicles, namely, power supplies and controllers, high voltage and low voltage power regulator systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems comprised of air flow sensors electrical and signal integration components of high voltage and low voltage systems for heavy duty vehicles, namely, electronic circuitsClass 009 for Energy storage and electric charging systems and infrastructure, namely, charging appliances for rechargeable equipment and energy storage appliances for rechargeable equipment in the form of batteries and software for controlling rechargeable equipment, charging appliances, and energy storage appliances and for rechargeable equipment for heavy duty electric vehicles; charging system for multiple vehicles and fleets of vehicles, comprised of energy storage batteries and charging stations for electric vehicles, electronic control devices, software and electronic controls for controlling electric engines, electronic systems, and fuel systems of heavy duty vehicles, for inputting and management of tariff data and schedules, electric equipment for motor vehicles, namely, power supplies and controllers, high voltage and low voltage power regulator systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems comprised of air flow sensors electrical and signal integration components of high voltage and low voltage systems for heavy duty vehicles, namely, electronic circuits
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.

The applicant's current attorney information: Eugene M. Pak. Eugene M. Pak of WENDEL ROSEN BLACK & DEAN LLP, is located at

      1111 BROADWAY, 24TH FLOOR
      OAKLAND, California 94607
      US
The docket/reference number is 022198.7000.

The phone number is 510-834-6600.

The fax number is 510-834-1928.

The email address is tmdocket@wendel.com

The applicants proposed attorney information: Eugene M. Pak. Other appointed attorneys are Richard A. Lyons. Eugene M. Pak of WENDEL ROSEN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1111 BROADWAY, 24TH FLOOR
      OAKLAND, California 94607
      United States
The docket/reference number is 022198.7000.

The phone number is 510-834-6600.

The fax number is 510-834-1928.

The email address is tmdocket@wendel.com

Eugene M. Pak 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: EUGENE M. PAK. EUGENE M. PAK of WENDEL ROSEN BLACK & DEAN LLP, is located at

      1111 BROADWAY, 24TH FLOOR
      OAKLAND, California 94607
      US
The docket/reference number is 022198.7000.

The phone number is 510-834-6600.

The fax number is 510-834-1928.

The email address is tmdocket@wendel.com; epak@wendel.com; cgada@wendel.com

The applicants proposed correspondence information: Eugene M. Pak. Eugene M. Pak of WENDEL ROSEN LLP, is located at

      1111 BROADWAY, 24TH FLOOR
      OAKLAND, California 94607
      United States
The docket/reference number is 022198.7012.

The phone number is 510-834-6600.

The fax number is 510-834-1928.

The email address is tmdocket@wendel.com; epak@wendel.com; cgada@wendel.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Eugene M. Pak/     Date: 01/13/2020
Signatory's Name: Eugene M. Pak
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 510-834-6600

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.

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

Mailing Address:    EUGENE M. PAK
   WENDEL ROSEN BLACK & DEAN LLP
   
   1111 BROADWAY, 24TH FLOOR
   OAKLAND, California 94607
Mailing Address:    Eugene M. Pak
   WENDEL ROSEN LLP
   1111 BROADWAY, 24TH FLOOR
   OAKLAND, California 94607
        
Serial Number: 88093247
Internet Transmission Date: Mon Jan 13 21:55:29 EST 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XX-20200113215529905
135-88093247-700712d6bdb88aac6d8e9dba189
bd4fc9458fae43f6391e5ad13fdd8b5a804cbc-N
/A-N/A-20200113215250328194