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. 88231869 SMRTLITE BY DSI LIGHTING (Stylized and/or with Design, see http://uspto.report/TM/88231869/mark.png) has been amended as follows:

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

Attorney Docket: 1510-45

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

App. Ser. No.: 88/231,869
Filing Date: Dec. 17, 2019
Mark:  SMRTLite by DSI LIGHTING (Design)

Examining Attorney: Elaine Xu, Esq.

Law Office: 128

 

 

 

RESPONSE TO OFFICE ACTION

This communication is in connection with the Office Action transmitted on September 10, 2019.

 

AMENDMENTS

Please amend the identification of goods and services in International Class 011 as follows:

CURRENT:    Decorative lighting in the nature of electrically-illuminated residential designer pendant lighting fixtures, ceiling lights, table lamps, desk lamps and electric sconces

NEW:              Decorative lighting in the nature of electrically-illuminated LED lighting strips

 

REMARKS

Specimen Refusal

            The Examining Attorney has provided that registration is refused because the prior-submitted specimen does not show the applied-for mark in use in commerce.  Pursuant to the Examining Attorney’s instructions, a substitute specimen is submitted herewith. 

Applicant respectfully requests to amend the present application to clarify and/or limit the goods identified herein pursuant to TMEP § 1202.06.  Attorney for Applicant believes that this amendment does not impermissibly broaden the identification of goods pursuant to TMEP § 1202.06.  Furthermore, it is respectfully noted that this amendment does not impermissibly add to or broaden the scope of the recited goods, and therefore does not require reexamination and may be entered without republication pursuant to TMEP § 1505.02(a).

 

CONCLUSION

A good faith effort has been made to place the present application into condition for registration and such action is respectfully requested.  If there are any questions prior to registration, the Examining Attorney may contact the undersigned.

Dated: September 12, 2019

Respectfully submitted,

THE MARTINEZ GROUP PLLC

By:  /Frank J. Martinez, Esq./

Attorney for Applicant, New York State Bar Member
For Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

THE MARTINEZ GROUP PLLC

55 Poplar Street, Suite 1-D
Brooklyn, New York 11201
718.797.2341
FM@martinezgroup.com

 

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Attorney Docket: 1510-45

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

App. Ser. No.: 88/231,869
Filing Date: Dec. 17, 2019
Mark:  SMRTLite by DSI LIGHTING (Design)

 

DECLARATION OF FRANK J. MARTINEZ

            I, Frank J. Martinez, do hereby declare:

1.      I am the Attorney of Record for Design Solutions International, Inc., the owner of the above-identified registration, and am authorized to make the following statements made herein.

2.      The owner was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.

3.      The substitute specimen was in use in commerce prior to expiration of the filing deadline for a statement of use.

4.      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 this submission, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Dated: September 12, 2019

By:  /Frank J. Martinez, Esq./

Attorney for Applicant, New York State Bar Member
For Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Decorative lighting in the nature of electrically-illuminated residential designer pendant lighting fixtures, ceiling lights, table lamps, desk lamps and electric sconces
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.

In International Class 011, the mark was first used at least as early as 07/03/2019 and first used in commerce at least as early as 07/03/2019 .

Proposed:
Tracked Text Description: Decorative lighting in the nature of electrically-illuminated residential designer pendant lighting fixtures, ceiling lights, table lamps, desk lamps and electric sconces; Decorative lighting in the nature of electrically-illuminated LED lighting stripsClass 011 for Decorative lighting in the nature of electrically-illuminated LED lighting strips

Deleted Filing Basis: 1(b)
In International Class 011, the mark was first used at least as early as 07/03/2019 . and first used in commerce at least as early as 07/03/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 011 . The specimen(s) submitted consists of The submitted specimen consists of Applicant's website, whereupon the subject mark is shown in close proximity to the points of inquiry and sale for the goods described in the application. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

The applicant's current attorney information: FRANK J. MARTINEZ. FRANK J. MARTINEZ of THE MARTINEZ GROUP PLLC, is located at

      55 POPLAR ST STE 1-D
      BROOKLYN, New York 11201-6930
      US
The docket/reference number is 1510-45.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com

The applicants proposed attorney information: FRANK J. MARTINEZ. FRANK J. MARTINEZ of THE MARTINEZ GROUP PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      55 Poplar St Ste 1-D
      BROOKLYN, New York 11201-6930
      United States
The docket/reference number is 1510-45.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com

FRANK J. MARTINEZ 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: FRANK J. MARTINEZ. FRANK J. MARTINEZ of THE MARTINEZ GROUP PLLC, is located at

      55 POPLAR ST STE 1-D
      BROOKLYN, New York 11201-6930
      US
The docket/reference number is 1510-45.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com; docket@martinezgroup.com

The applicants proposed correspondence information: FRANK J. MARTINEZ. FRANK J. MARTINEZ of THE MARTINEZ GROUP PLLC, is located at

      55 Poplar St Ste 1-D
      BROOKLYN, New York 11201-6930
      United States
The docket/reference number is 1510-45.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com; docket@martinezgroup.com

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: /Frank J. Martinez, Esq./      Date: 09/12/2019
Signatory's Name: Frank J. Martinez
Signatory's Position: Attorney of Record, New York State bar member
Signatory's Phone Number: 718.797.2341


Response Signature
Signature: /Frank J. Martinez, Esq./     Date: 09/12/2019
Signatory's Name: Frank J. Martinez
Signatory's Position: Attorney of Record, New York bar member

Signatory's Phone Number: 718.797.2341

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:    FRANK J. MARTINEZ
   THE MARTINEZ GROUP PLLC
   
   55 POPLAR ST STE 1-D
   BROOKLYN, New York 11201-6930
Mailing Address:    FRANK J. MARTINEZ
   THE MARTINEZ GROUP PLLC
   55 Poplar St Ste 1-D
   BROOKLYN, New York 11201-6930
        
Serial Number: 88231869
Internet Transmission Date: Thu Sep 12 16:01:37 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909121601372
93553-88231869-610fc6fa568bb5988a2a1b0e6
2cd3b9336d398f28485f3e181143aaba2bf46532
b-N/A-N/A-20190912153542833609