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. 88206043 TILS(Standard Characters, see http://uspto.report/TM/88206043/mark.png) has been amended as follows:

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

These remarks are submitted in response to the Office action dated February 19, 2019. Applicant amends the identification of goods to address all issues listed by the Examining Attorney. Applicant encourages the Examining Attorney to contact the undersigned attorney of record by telephone to work through any remaining goods identification issues. With regards to the Section 2(d) refusals, Applicant submits that the amendments made herein to the identification of goods have resolved any potential conflicts with the cited registrations, as follows. With regard to the refusal based on the registered mark TILL (Registration No. 5033314), Applicant has amended the "computer programs" recited in class 009 and "providing computer programs on data networks" in class 042 to clarify that the computer programs in both classes are "in the field of fuel cell testing, battery testing, electric motor testing, powertrain testing, internal combustion engine testing." There is no evidence that the cited registration is for use on software in this field. Thus, the difference in the marks (TILL vs. TILS) coupled with difference in the goods (Applicant's goods being limited to specific areas of testing vehicle performance) are believed to be sufficient to avoid any potential for consumer confusion. A withdrawal of the refusal based upon Registration No. 5033314 is thereby requested. With regard to the refusal based on the registered mark "TILL" (Registration No. 4620948), Applicant has amended the services in class 042, including the "design and provision of equipment for total evaluation of vehicles" "lending of total evaluation devices for vehicles" "designing, creating, and maintaining software for testing, measurement and analysis" "consulting services in the field of testing, measurement and analysis of vehicles" "designing and providing equipment for testing, measurement and analysis for vehicles" "lending of test, measurement and analysis equipment for vehicles" "rental of computers" "designing, creating, and maintaining computer programs" "testing and research" and "measurement and inspection of machinery and equipment" to each be limited to the fields of "testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis." Applicant submits that the difference in the marks (TILL vs. TILS) and the difference in the services (Applicant's services being limited to specified enumerated fields of vehicle testing) are sufficient to avoid any potential for consumer confusion. Accordingly, Applicant respectfully submits that the refusal under Registration No. 4620948 should be withdrawn. With regard to the refusal based on Registration No. 1733894 (TIL-TEK), applicant submits that the marks are different (TIL-TEK vs. TILS) and the goods are also sufficiently different (antennas vs. computer networking hardware for use in a computer-controlled apparatus for testing and measuring vehicle performance) to avoid any possibility of consumer confusion. Accordingly, Applicant respectfully submits that the refusal based on Registration No. 1733894 should be withdrawn. In view of the above, Applicant requests allowance of the application and forwarding to publications. The Examiner is encouraged to telephone the undersigned counsel of record to resolve any outstanding issues related to this application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Total evaluation device for vehicles and their constituent parts and accessories; total evaluation software for vehicles and their constituent parts and accessories; test, measurement and analysis equipment for vehicles and their constituent parts and accessories; software for testing, measurement and analysis of vehicles and their constituent parts and accessories; measuring and testing machines and instruments; electronic machines, apparatus and their parts; computer programs; laboratory apparatus and instruments; laboratory experimental machines and apparatus; photographic apparatus and instruments; cinematographic apparatus; optical machines and apparatus; power distribution and control machines and apparatus; electric and magnetic meters and testers; telecommunications apparatus
Original Filing Basis:
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[ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Total evaluation device for vehicles and their constituent parts and accessories; Total evaluation device for vehicles and their structural component parts, namely computer-controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; total evaluation software for vehicles and their constituent parts and accessories; total evaluation software for vehicles and their structural component parts, namely, software for modeling and controlling testing vehicle fuel cells, vehicle batteries, electric motors, powertrains, internal combustion engines and chassis; test, measurement and analysis equipment for vehicles and their constituent parts and accessories; test, measurement and analysis equipment for vehicles and their structural component parts, namely fuel cell testing devices, battery testing devices, electric motor testing devices, powertrain testing devices, internal combustion engine testing devices; software for testing, measurement and analysis of vehicles and their constituent parts and accessories; software for testing, measurement and analysis of vehicles and their structural component parts, in the field of fuel cell testing, battery testing, electric motor testing, powertrain testing, internal combustion engine testing; measuring and testing machines and instruments; electronic machines, apparatus and their parts; electronic machines, apparatus and their parts, namely, test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; computer programs; computer programs in the field of fuel cell testing, battery testing, electric motor testing, powertrain testing, internal combustion engine testing; laboratory apparatus and instruments; telecommunications apparatus, namely, computer networking hardware for use in a computer-controlled apparatus for testing and measuring vehicle performance; laboratory experimental machines and apparatus; photographic apparatus and instruments; cinematographic apparatus; optical machines and apparatus; power distribution and control machines and apparatus; electric and magnetic meters and testers; telecommunications apparatusClass 009 for Total evaluation device for vehicles and their structural component parts, namely computer-controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; total evaluation software for vehicles and their structural component parts, namely, software for modeling and controlling testing vehicle fuel cells, vehicle batteries, electric motors, powertrains, internal combustion engines and chassis; test, measurement and analysis equipment for vehicles and their structural component parts, namely fuel cell testing devices, battery testing devices, electric motor testing devices, powertrain testing devices, internal combustion engine testing devices; software for testing, measurement and analysis of vehicles and their structural component parts, in the field of fuel cell testing, battery testing, electric motor testing, powertrain testing, internal combustion engine testing; measuring and testing machines and instruments; electronic machines, apparatus and their parts, namely, test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; computer programs in the field of fuel cell testing, battery testing, electric motor testing, powertrain testing, internal combustion engine testing; telecommunications apparatus, namely, computer networking hardware for use in a computer-controlled apparatus for testing and measuring vehicle performance
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 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, 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 [ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Repair and maintenance of total evaluation device for vehicles and their constituent parts and accessories; repair and maintenance of test, measurement and analysis equipment for vehicles and their constituent parts and accessories; repair and maintenance of measuring and testing machines and instruments; construction services; advisory services relating to building construction; operation, inspection, and maintenance of building facilities; repair and maintenance of electronic machines and apparatus; repair and maintenance of electric motors; repair and maintenance of power distribution and control machines and apparatus; repair and maintenance of power generators; repair and maintenance of laboratory apparatus and instruments
Original Filing Basis:
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[ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Repair and maintenance of total evaluation device for vehicles and their constituent parts and accessories; Repair and maintenance of total evaluation device for vehicles and their structural component parts, namely, repair and maintenance of computer-controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; repair and maintenance of test, measurement and analysis equipment for vehicles and their constituent parts and accessories; repair and maintenance of test, measurement and analysis equipment for vehicles and their structural component parts for measuring vehicle performance; repair and maintenance of measuring and testing machines and instruments; repair and maintenance of measuring and testing machines and instruments for measuring vehicle performance; construction services; advisory services relating to building construction for buildings that house computer controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; advisory services relating to building construction; repair and maintenance of electronic machines and apparatus, namely, apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; operation, inspection, and maintenance of building facilities; repair and maintenance of electric motors; repair and maintenance of electronic machines and apparatus; repair and maintenance of power distribution and control machines and apparatus; repair and maintenance of power generators; repair and maintenance of laboratory apparatus and instruments for use in measuring vehicle performance; repair and maintenance of laboratory apparatus and instrumentsClass 037 for Repair and maintenance of total evaluation device for vehicles and their structural component parts, namely, repair and maintenance of computer-controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; repair and maintenance of test, measurement and analysis equipment for vehicles and their structural component parts for measuring vehicle performance; repair and maintenance of measuring and testing machines and instruments for measuring vehicle performance; advisory services relating to building construction for buildings that house computer controlled apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; repair and maintenance of electronic machines and apparatus, namely, apparatus for testing and measuring vehicle performance, including test stations for vehicle fuel cells, test stations for vehicle batteries, test stations for vehicle electric motors and powertrains, test stations for internal combustion engine testing, and test stations for vehicle chassis testing; repair and maintenance of electric motors; repair and maintenance of power distribution and control machines and apparatus; repair and maintenance of power generators; repair and maintenance of laboratory apparatus and instruments for use in measuring vehicle performance
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 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, 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 [ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing total evaluation software for vehicles and their components and accessories; designing, creating, and maintaining total evaluation software for vehicles and their components and accessories; providing total evaluation service for vehicles and their components and accessories; consulting services in the field of total evaluation of vehicles and their components and accessories; design and provision of equipment for total evaluation of vehicles and their components and accessories; lending of total evaluation devices for vehicles and their constituent parts and accessories; providing software for testing, measurement and analysis on vehicles and their constituent parts and accessories; designing, creating, and maintaining software for testing, measurement and analysis related to vehicles and their constituent parts and accessories; providing testing, measurement and analysis services for vehicles and their components and accessories; consulting services in the field of testing, measurement and analysis of vehicles and their components and accessories; designing and providing equipment for testing, measurement and analysis for vehicles and their components and accessories; lending of test, measurement and analysis equipment for vehicles and their components and accessories; providing computer programs on data networks; rental of computers; designing, creating, and maintaining computer programs; testing and research on machines, apparatus and instruments; measurement and inspection of machinery and equipment; technological advice relating to computers, automobiles, and industrial machines; designing of machines, apparatus, instruments (including their parts) and systems composed of such machines, apparatus, and instruments; rental of measuring apparatus; rental of laboratory apparatus and instruments; rental of laboratory experimental machines and apparatus
Original Filing Basis:
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[ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing total evaluation software for vehicles and their components and accessories; Providing total evaluation software for vehicles and their structural component parts in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing for vehicle chassis; designing, creating, and maintaining total evaluation software for vehicles and their components and accessories; designing, creating, and maintaining total evaluation software for vehicles and their structural component parts in the field of in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing for vehicle chassis; providing total evaluation service for vehicles and their components and accessories; providing total evaluation service for vehicles and their structural component parts, namely, providing services testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; consulting services in the field of total evaluation of vehicles and their components and accessories; consulting services in the field of total evaluation of vehicles and their structural component parts, namely, consulting in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; design and provision of equipment for total evaluation of vehicles and their components and accessories; design and provision of equipment for total evaluation of vehicles and their structural component parts, namely, design and provision of equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; lending of total evaluation devices for vehicles and their constituent parts and accessories; lending of total evaluation devices for vehicles and their structural component parts, namely, lending of equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; providing software for testing, measurement and analysis on vehicles and their constituent parts and accessories; providing on-line, non-downloadable software for testing, measurement and analysis on vehicles and their structural component parts; designing, creating, and maintaining software for testing, measurement and analysis related to vehicles and their constituent parts and accessories; designing, creating, and maintaining on-line, non-downloadable software for testing, measurement and analysis related to vehicles and their structural component parts; providing testing, measurement and analysis services for vehicles and their components and accessories; providing testing, measurement and analysis services for vehicles and their structural component parts, namely, providing testing for vehicle fuel cells, testing for vehicle batteries, testing for vehicle electric motors and powertrains, testing for internal combustion engines, and testing for vehicle chassis; consulting services in the field of testing, measurement and analysis of vehicles and their components and accessories; consulting services in the field of testing, measurement and analysis of vehicles and their structural component parts namely, providing consulting services in the fields of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; designing and providing equipment for testing, measurement and analysis for vehicles and their components and accessories; designing and providing equipment for testing, measurement and analysis for vehicles and structural component parts namely, designing and providing equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; lending of test, measurement and analysis equipment for vehicles and their components and accessories; lending of test, measurement and analysis equipment for vehicles and their structural component parts namely, lending equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; providing computer programs on data networks; providing on-line, non-downloadable computer programs on data networks for testing, measurement and analysis of vehicles and their structure component parts; rental of computers; rental of computers for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; designing, creating, and maintaining computer programs; designing, creating, and maintaining computer programs for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; testing and research on machines, apparatus and instruments; measurement and inspection of machinery and equipment; measurement and inspection of machinery and equipment in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; technological advice relating to computers, automobiles, and industrial machines; technological advice relating to computers, automobiles, and industrial machines in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; designing of machines, apparatus, instruments (including their parts) and systems composed of such machines, apparatus, and instruments; designing of machines, apparatus, instruments including their structural component parts and systems composed of such machines, apparatus, and instruments in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; rental of measuring apparatus; rental of measuring apparatus for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; rental of laboratory apparatus and instruments; rental of laboratory experimental machines and apparatusClass 042 for Providing total evaluation software for vehicles and their structural component parts in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing for vehicle chassis; designing, creating, and maintaining total evaluation software for vehicles and their structural component parts in the field of in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing for vehicle chassis; providing total evaluation service for vehicles and their structural component parts, namely, providing services testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; consulting services in the field of total evaluation of vehicles and their structural component parts, namely, consulting in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; design and provision of equipment for total evaluation of vehicles and their structural component parts, namely, design and provision of equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; lending of total evaluation devices for vehicles and their structural component parts, namely, lending of equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; providing on-line, non-downloadable software for testing, measurement and analysis on vehicles and their structural component parts; designing, creating, and maintaining on-line, non-downloadable software for testing, measurement and analysis related to vehicles and their structural component parts ; providing testing, measurement and analysis services for vehicles and their structural component parts, namely, providing testing for vehicle fuel cells, testing for vehicle batteries, testing for vehicle electric motors and powertrains, testing for internal combustion engines, and testing for vehicle chassis; consulting services in the field of testing, measurement and analysis of vehicles and their structural component parts namely, providing consulting services in the fields of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; designing and providing equipment for testing, measurement and analysis for vehicles and structural component parts namely, designing and providing equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; lending of test, measurement and analysis equipment for vehicles and their structural component parts namely, lending equipment for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; providing on-line, non-downloadable computer programs on data networks for testing, measurement and analysis of vehicles and their structure component parts; rental of computers for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; designing, creating, and maintaining computer programs for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; testing and research on machines, apparatus and instruments; measurement and inspection of machinery and equipment in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; technological advice relating to computers, automobiles, and industrial machines in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines; designing of machines, apparatus, instruments including their structural component parts and systems composed of such machines, apparatus, and instruments in the field of testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis; rental of measuring apparatus for testing vehicle fuel cells, testing vehicle batteries, testing vehicle electric motors and powertrains, testing internal combustion engines, and testing vehicle chassis
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 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, 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 [ Japan application number 2018-100804 filed 08/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Mark D. Alleman. Mark D. Alleman of ALLEMAN HALL CREASMAN & TUTTLE LLP, is located at

      SUITE 2300
      900 SW 5TH AVE
      PORTLAND, Oregon 97204
      US
The docket/reference number is HRB18403.

The phone number is 503-595-7300.

The fax number is 503-595-7301.

The email address is TrademarkDocket@allemanhall.com

The applicants proposed attorney information: Mark D. Alleman. Other appointed attorneys are M. Matthews Hall, Christopher S. Tuttle, Jason C. Creasman, Michael J. Andri, Charles F. Moore, Lisa Tom, Kimberly Lu. Mark D. Alleman of ALLEMAN HALL CREASMAN & TUTTLE 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

      SUITE 2300
      900 SW 5TH AVE
      PORTLAND, Oregon 97204
      United States
The docket/reference number is HRB18403.

The phone number is 503-595-7300.

The fax number is 503-595-7301.

The email address is TrademarkDocket@allemanhall.com

Mark D. Alleman submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: MARK D. ALLEMAN. MARK D. ALLEMAN of ALLEMAN HALL CREASMAN & TUTTLE LLP, is located at

      SUITE 2300
      900 SW 5TH AVE
      PORTLAND, Oregon 97204
      US
The docket/reference number is HRB18403.

The phone number is 503-595-7300.

The fax number is 503-595-7301.

The email address is TrademarkDocket@allemanhall.com; boyle@allemanhall.com

The applicants proposed correspondence information: Mark D. Alleman. Mark D. Alleman of ALLEMAN HALL CREASMAN & TUTTLE LLP, is located at

      SUITE 2300
      900 SW 5TH AVE
      PORTLAND, Oregon 97204
      United States
The docket/reference number is HRB18403.

The phone number is 503-595-7300.

The fax number is 503-595-7301.

The email address is TrademarkDocket@allemanhall.com; mark@allemanhall.com; tavni@allemanhall.com; campell@allemanhall.com; gregory@allemanhall.com

SIGNATURE(S)
Response Signature
Signature: /Mark D. Alleman/     Date: 08/15/2019
Signatory's Name: Mark D. Alleman
Signatory's Position: Attorney of record

Signatory's Phone Number: 503-595-7303

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:    MARK D. ALLEMAN
   ALLEMAN HALL CREASMAN & TUTTLE LLP
   SUITE 2300
   900 SW 5TH AVE
   PORTLAND, Oregon 97204
Mailing Address:    Mark D. Alleman
   ALLEMAN HALL CREASMAN & TUTTLE LLP
   SUITE 2300
   900 SW 5TH AVE
   PORTLAND, Oregon 97204
        
Serial Number: 88206043
Internet Transmission Date: Thu Aug 15 18:56:59 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201908151856595904
50-88206043-6109d36a9ed3962db7868c429930
f572cf40c17019adc1b231bef323d67c146d66-N
/A-N/A-20190815142643338443