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. 88202768 WILLOW(Standard Characters, see http://uspto.report/TM/88202768/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Office Action dated March 9, 2020, Applicant has removed the Section 44 filing basis for Class 9. Applicant believes that all issues have been addressed.

If questions remain, the Examining Attorney is invited to contact Applicant's counsel, Lorraine Linford, by email at LLinford@cozen.com or by telephone at (206) 340-1000.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Electronic building automation installations for remote control of connected devices, namely computer hardware and software installed in buildings, for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure and networked devices in the Internet of Things (IoT); Electronic digital automation installations for remote measuring of connected devices in buildings, comprised of computer hardware and software for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure networked devices in the Internet of Things (IoT); Electronic digital building automation systems, that provide access to building data via a digital twin interface, comprised of sensors connected to building automation and control (BAC) networks for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure and networked devices in the Internet of things (IoT)
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Australia application number 1960642 filed 10/09/2018]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 009 for Electronic building automation installations for remote control of connected devices, namely computer hardware and software installed in buildings, for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure and networked devices in the Internet of Things (IoT); Electronic digital automation installations for remote measuring of connected devices in buildings, comprised of computer hardware and software for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure networked devices in the Internet of Things (IoT); Electronic digital building automation systems, that provide access to building data via a digital twin interface, comprised of sensors connected to building automation and control (BAC) networks for monitoring elevators, HVAC equipment, building access control devices, temperature sensors, human movement sensors, network infrastructure and networked devices in the Internet of things (IoT)
Deleted Filing Basis: 44(d)
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.
Correspondence Information (current):
      Lorraine Linford
      PRIMARY EMAIL FOR CORRESPONDENCE: LLinford@cozen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): phipdocketing@cozen.com

The docket/reference number is 930001.204.
Correspondence Information (proposed):
      Lorraine Linford
      PRIMARY EMAIL FOR CORRESPONDENCE: LLinford@cozen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): phipdocketing@cozen.com

The docket/reference number is 930001.204.

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).

SIGNATURE(S)
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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU 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 filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, 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 filing date of the application or AOU; 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: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, 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; 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 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.

Signature: /Mayura Noordyke/      Date: 09/08/2020
Signatory's Name: Mayura I. Noordyke
Signatory's Position: Attorney for Applicant, Minnesota Bar Member
Signatory's Phone Number: 612-260-9074


Response Signature
Signature: /Mayura Noordyke/     Date: 09/08/2020
Signatory's Name: Mayura Noordyke
Signatory's Position: Attorney for Applicant, Minnesota Bar Member

Signatory's Phone Number: 612-260-9074

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:    Lorraine Linford
   COZEN O'CONNOR
   SUITE 1900
   999 3RD AVENUE
   SEATTLE, Washington 98101
Mailing Address:    Lorraine Linford
   COZEN O'CONNOR
   SUITE 1900
   999 3RD AVENUE
   SEATTLE, Washington 98101
        
Serial Number: 88202768
Internet Transmission Date: Tue Sep 08 17:25:27 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202009081725270
86581-88202768-7501694732754ddee14195586
c3dada07621f13599beda648e1ed9e3215513e37
c-N/A-N/A-20200908134708171932