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. 88212884 CORVUS ENERGY(Standard Characters, see http://uspto.report/TM/88212884/mark.png) has been amended as follows:

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

Applicant is amending the descriptions of services in Classes 35, 37, 42 and 45 pursuant to the Examining Attorney's suggestions. Applicant is adding Classes 35 and 40 but is deleting Class 38 so an additional fee for one class is required. Applicant also owes the fee for a previously added class so $550 is being submitted herewith. With the amendments contained herein the application should be in order for acceptance and publication and said actions are respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for (Based on Intent to Use) Providing customer access to processed data on the internet in the field of energy storage systems

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for (Based on Intent to Use) Installing and commissioning energy storage systems, namely, energy storage hardware; maintaining and repairing energy storage systems, namely, energy storage hardware; custom design and manufacture of energy storage computer hardware
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: (Based on Intent to Use) Installing and commissioning energy storage systems, namely, energy storage hardware; (Based on Intent to Use) Installing energy storage systems, namely, energy storage hardware; maintaining and repairing energy storage systems, namely, energy storage hardware; custom design and manufacture of energy storage computer hardware; Providing information on the internet to customers in the nature of processed data in the field of maintenance and repair of energy storage system hardware; Providing information about the repair of energy storage systems; Technical consulting in the field of repair of energy storage systemsClass 037 for (Based on Intent to Use) Installing energy storage systems, namely, energy storage hardware; maintaining and repairing energy storage systems, namely, energy storage hardware; Providing information on the internet to customers in the nature of processed data in the field of maintenance and repair of energy storage system hardware; Providing information about the repair of energy storage systems; Technical consulting in the field of repair of energy storage systems
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 042 for (Based on 44(d) Priority Application) (Based on Intent to Use) Collecting, evaluating and analyzing of data from energy storage systems; application service provider featuring application programming interface (API) software for providing customer access to processed data and information from a cloud-based database system; collecting, evaluating and analyzing of data from energy storage systems; providing information in the fields of energy storage systems; technical consulting in the field of energy storage systems; designing, programming, and engineering of energy storage systems, energy storage hardware and software; technical consultation for others in the field of certification of energy storage systems, namely, energy storage hardware and software; installing and commissioning energy storage software; maintaining and repairing energy storage software; custom design and development of energy storage software
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: (Based on 44(d) Priority Application) (Based on Intent to Use) Collecting, evaluating and analyzing of data from energy storage systems; application service provider featuring application programming interface (API) software for providing customer access to processed data and information from a cloud-based database system; collecting, evaluating and analyzing of data from energy storage systems; collecting, evaluating and analyzing of data from energy storage systems for the purpose of quality control, energy auditing, product failure analysis, and assessment of condition of energy storage systems and storage capacity of energy storage systems; providing information in the fields of energy storage systems; providing information about technology in the fields of energy storage systems; technical consulting in the field of energy storage systems; Technological consulting in the field of energy storage systems; designing, programming, and engineering of energy storage systems, energy storage hardware and software; technical consultation for others in the field of certification of energy storage systems, namely, energy storage hardware and software; installing energy storage software; installing and commissioning energy storage software; maintaining and repairing energy storage software; custom design and development of energy storage software; Custom design of energy storage computer hardware; Providing customer information on the internet in the nature of processed data in the field of the design of energy storage systems and assessment of condition of energy storage systems and storage capacity of energy storage systemsClass 042 for (Based on 44(d) Priority Application) (Based on Intent to Use) Collecting, evaluating and analyzing of data from energy storage systems; application service provider featuring application programming interface (API) software for providing customer access to processed data and information from a cloud-based database system; collecting, evaluating and analyzing of data from energy storage systems for the purpose of quality control, energy auditing, product failure analysis, and assessment of condition of energy storage systems and storage capacity of energy storage systems; providing information about technology in the fields of energy storage systems; Technological consulting in the field of energy storage systems; designing, programming, and engineering of energy storage systems, energy storage hardware and software; installing energy storage software; maintaining and repairing energy storage software; custom design and development of energy storage software; Custom design of energy storage computer hardware; Providing customer information on the internet in the nature of processed data in the field of the design of energy storage systems and assessment of condition of energy storage systems and storage capacity of energy storage systems
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 045 for (Based on Intent to Use) Regulatory compliance consulting in the field of energy storage systems
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: (Based on Intent to Use) Regulatory compliance consulting in the field of energy storage systems; Providing information about the product safety of energy storage systemsClass 045 for (Based on Intent to Use) Regulatory compliance consulting in the field of energy storage systems; Providing information about the product safety of energy storage systems
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 hereby adds the following class of goods/services to the application:
New: Class 035 for (Based on Intent to Use) Providing consumer product information in the field of energy storage systems; Technical consulting in the field of marketing energy storage systems
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 hereby adds the following class of goods/services to the application:
New: Class 040 for (Based on Intent to Use) Custom manufacture of energy storage computer hardware; (Based on 44(d) (Based on Intent to Use) Providing information manufacturing of energy storage systems
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 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 [ Canada application number 1902568 filed 06/04/2018]. 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: Susan D. Pitchford. Susan D. Pitchford of CHERNOFF VILHAUER LLP, is located at

      SUITE 725
      111 SW COLUMBIA STREET
      PORTLAND, Oregon 97201
      US
The docket/reference number is 9925.0002.

The phone number is 503-227-5631.

The fax number is 503-228-4373.

The email address is sdp.docket@chernofflaw.com

The applicants proposed attorney information: Susan D. Pitchford. Other appointed attorneys are Jacob E. Vilhauer, Donald B. Haslett, J. Peter Staples, Kevin L. Russell, Kurt Rohlfs, Peter D. Sabido, Stewart B. Myers and Chia Ju Hung. Susan D. Pitchford of CHERNOFF VILHAUER 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 725
      111 SW COLUMBIA STREET
      PORTLAND, Oregon 97201
      United States
The docket/reference number is 9925.0002.

The phone number is 503-227-5631.

The fax number is 503-228-4373.

The email address is sdp.docket@chernofflaw.com

Susan D. Pitchford 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: SUSAN D. PITCHFORD. SUSAN D. PITCHFORD of CHERNOFF VILHAUER LLP, is located at

      SUITE 725
      111 SW COLUMBIA STREET
      PORTLAND, Oregon 97201
      US
The docket/reference number is 9925.0002.

The phone number is 503-227-5631.

The fax number is 503-228-4373.

The email address is sdp.docket@chernofflaw.com

The applicants proposed correspondence information: Susan D. Pitchford. Susan D. Pitchford of CHERNOFF VILHAUER LLP, is located at

      SUITE 725
      111 SW COLUMBIA STREET
      PORTLAND, Oregon 97201
      United States
The docket/reference number is 9925.0002.

The phone number is 503-227-5631.

The fax number is 503-228-4373.

The email address is sdp.docket@chernofflaw.com

FEE(S)
Fee(s) in the amount of $550 is being submitted.

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: /s/      Date: 12/04/2019
Signatory's Name: Susan D. Pitchford
Signatory's Position: Attorney of record, Oregon bar member
Signatory's Phone Number: 5032275631


Response Signature
Signature: /s/     Date: 12/04/2019
Signatory's Name: Susan D. Pitchford
Signatory's Position: Attorney of record, Oregon bar member

Signatory's Phone Number: 5032275631

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:    SUSAN D. PITCHFORD
   CHERNOFF VILHAUER LLP
   SUITE 725
   111 SW COLUMBIA STREET
   PORTLAND, Oregon 97201
Mailing Address:    Susan D. Pitchford
   CHERNOFF VILHAUER LLP
   SUITE 725
   111 SW COLUMBIA STREET
   PORTLAND, Oregon 97201
        
RAM Sale Number: 88212884
RAM Accounting Date: 12/04/2019
        
Serial Number: 88212884
Internet Transmission Date: Wed Dec 04 18:07:24 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019120418072417
9667-88212884-700c0ea56f2c2ef98fb3756d91
faf12523c943fbd137d21e272f2859e86694d9ba
-CC-07222881-20191204170323301714