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. 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 systems comprised of batteries, battery modules, and battery packs for heavy duty vehicles; battery management systems for vehicles comprising battery cells, battery modules, battery packs, and battery thermal management systems; energy storage and electric charging systems and infrastructure, namely, charging and energy storage appliances and software control systems for rechargeable equipment; electric control devices for energy management and energy storage; charging 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 and charging stations, electronic control devices, charging and energy storage appliances, software for controlling electric engines, electronic systems, fuel systems of heavy duty vehicles, and for inputting and management of tariff data and schedules, and electronic controls for electronic engines and fuel systems of heavy duty vehicles; electric equipment for motor vehicles, namely, power electronics and controls, high voltage and low voltage power systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems; electrical and signal integration of components of high voltage and low voltage systems for heavy duty vehicles; software for controlling electric engines, electronic systems, fuel systems for heavy duty vehicles; motor vehicle parts, namely, power electronics and controls for electric motors, and ancillary systems including power steering, air compressor and pneumatic systems, brakes and braking systems, HVAC systems, energy storage systems, and electrical and signal integration of components for heavy duty electric vehicles; and other equipment and systems for land vehicles
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 systems comprised of batteries, battery modules, and battery packs for heavy duty vehicles; 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; battery management systems for vehicles comprising battery cells, battery modules, battery packs, and battery thermal management systems; 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; energy storage and electric charging systems and infrastructure, namely, charging and energy storage appliances and software control systems for rechargeable equipment; electric control devices for energy management and energy storage; charging 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 and charging stations, electronic control devices, charging and energy storage appliances, software for controlling electric engines, electronic systems, fuel systems of heavy duty vehicles, and for inputting and management of tariff data and schedules, and electronic controls for electronic engines and fuel systems of heavy duty vehicles; electric equipment for motor vehicles, namely, power electronics and controls, high voltage and low voltage power systems, battery packs, battery connectors, battery modules, battery monitors, battery balancers, battery thermal management systems; electrical and signal integration of components of high voltage and low voltage systems for heavy duty vehicles; software for controlling electric engines, electronic systems, fuel systems for heavy duty vehicles; motor vehicle parts, namely, power electronics and controls for electric motors, and ancillary systems including power steering, air compressor and pneumatic systems, brakes and braking systems, HVAC systems, energy storage systems, and electrical and signal integration of components for heavy duty electric vehicles; and other equipment and systems for land vehiclesClass 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
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for buses and land vehicles; engines for buses and land vehicles; power train mechanism comprised of clutch, transmission, drive shaft, and differential; battery system mounting mechanisms in heavy duty vehicles; and other equipment and systems for land vehicles
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2017 and first used in commerce at least as early as 12/01/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: buses and land vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; engines for buses and land vehicles; battery system mounting mechanisms for use in heavy duty vehicles; power train mechanism comprised of clutch, transmission, drive shaft, and differential; battery system mounting mechanisms in heavy duty vehicles; and other equipment and systems for land vehiclesClass 012 for vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; battery system mounting mechanisms for use in heavy duty vehicles
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2017 and first used in commerce at least as early as 12/01/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Eugene M. Pak/     Date: 06/20/2019
Signatory's Name: Eugene M. Pak
Signatory's Position: Attorney of Record, California State Bar Member

Signatory's Phone Number: 510-834-6600

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: 88093247
Internet Transmission Date: Thu Jun 20 20:04:25 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XX-201906202004257817
10-88093247-62038274353539e254ba932fde18
61897dd623ba85733596d3ac402fd5124d47a-N/
A-N/A-20190620183958015788