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. 88210968 BEYOND(Standard Characters, see http://uspto.report/TM/88210968/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Response (Argument) has been attached.
Original PDF file:
evi_17316717859-20191204100611815110_._Office_Action_Response__04_Dec_2019_.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for fluid coolers being parts for machines; heat exchangers being part of machines
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: fluid coolers being parts for machines; fluid coolers being parts for machines to be used in connection with intelligent building systems for commercial use; heat exchangers being part of machines; heat exchangers being part of machines to be used in connection intelligent building systems for commercial useClass 007 for fluid coolers being parts for machines to be used in connection with intelligent building systems for commercial use; heat exchangers being part of machines to be used in connection intelligent building systems for commercial use
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 011 for Furnaces for commercial use; fluid coolers for commercial use; water heaters for commercial use; chillers for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; refrigeration machines and parts thereof for commercial use namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations
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: Furnaces for commercial use; Furnaces to be used in connection with intelligent building systems for commercial use; fluid coolers for commercial use; fluid coolers being parts for HVAC system to be used in connection with intelligent building systems for commercial use; water heaters for commercial use; water heaters to be used in connection with intelligent building systems for commercial use; chillers for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; chillers to be used in connection with intelligent building systems for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; refrigeration machines and parts thereof for commercial use namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; refrigeration machines and parts thereof to be used in connection with intelligent building systems for commercial use, namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations all to be used in connection with intelligent building systmes for commercial useClass 011 for Furnaces to be used in connection with intelligent building systems for commercial use; fluid coolers being parts for HVAC system to be used in connection with intelligent building systems for commercial use; water heaters to be used in connection with intelligent building systems for commercial use; chillers to be used in connection with intelligent building systems for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; refrigeration machines and parts thereof to be used in connection with intelligent building systems for commercial use, namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations all to be used in connection with intelligent building systmes for commercial use
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: John Bathke. John Bathke of IPHORGAN LTD., is located at

      195 ARLINGTON HEIGHTS ROAD, SUITE 125
      BUFFALO GROVE, Illinois 60089
      US
The docket/reference number is IRC 8935 US.

The phone number is 847-808-5500.

The fax number is 847-808-7238.

The email address is mail@iphorgan.com

The applicants proposed attorney information: John Bathke. Other appointed attorneys are Dermot Horgan, Jeannine A Rittenhouse, Michael Kenaga, Dmitriy Makarov, Carlynn Ferguson Davis, Alex Bara, Daniel Saam, Eric Estadt, and Christopher Lay. John Bathke of IPHORGAN LTD., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      195 Arlington Heights Rd., Ste. 125
      Buffalo Grove, Illinois 60089
      United States
The docket/reference number is IRC 8935 US.

The phone number is 847-808-5500.

The fax number is 847-808-7238.

The email address is mail@iphorgan.com

John Bathke 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: JOHN BATHKE. JOHN BATHKE of IPHORGAN LTD., is located at

      195 ARLINGTON HEIGHTS ROAD, SUITE 125
      BUFFALO GROVE, Illinois 60089
      US
The docket/reference number is IRC 8935 US.

The phone number is 847-808-5500.

The fax number is 847-808-7238.

The email address is mail@iphorgan.com; jbathke@iphorgan.com

The applicants proposed correspondence information: John Bathke. John Bathke of IPHORGAN LTD., is located at

      195 Arlington Heights Rd., Ste. 125
      Buffalo Grove, Illinois 60089
      United States
The docket/reference number is IRC 8935 US.

The phone number is 847-808-5500.

The fax number is 847-808-7238.

The email address is mail@iphorgan.com; jbathke@iphorgan.com

SIGNATURE(S)
Response Signature
Signature: /John T.D. Bathke/     Date: 12/04/2019
Signatory's Name: John T.D. Bathke
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 8478085500

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:    JOHN BATHKE
   IPHORGAN LTD.
   
   195 ARLINGTON HEIGHTS ROAD, SUITE 125
   BUFFALO GROVE, Illinois 60089
Mailing Address:    John Bathke
   IPHORGAN LTD.
   195 Arlington Heights Rd., Ste. 125
   Buffalo Grove, Illinois 60089
        
Serial Number: 88210968
Internet Transmission Date: Wed Dec 04 10:08:37 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201912041008379
36274-88210968-700976bd3fc15479fc0789dbb
316d69681c1fc82f6e581cc1380b3c873137efb6
-N/A-N/A-20191204100611815110