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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88242733 |
LAW OFFICE ASSIGNED |
LAW OFFICE 122 |
MARK SECTION |
MARK |
http://uspto.report/TM/88242733/mark.png |
LITERAL ELEMENT |
WE WORK |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
The Office action issued a partial refusal in Class 16 with respect to the printed materials, based on two prior registrations. Applicant thanks
for Examining Attorney for her preliminary comments on avoiding a likelihood of confusion with these prior marks. Applicant has now amended the identification to specify the subject matter of its
printed materials, and to specifically exclude materials that cover the subject matter of the cited registrations. Given the overall differences in the marks combined with Applicant?s narrowing
amendments, Applicant respectfully submits that confusion is not likely and requests that the refusals be withdrawn. |
GOODS AND/OR SERVICES SECTION (016)(current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Paper and cardboard; printed matter; photographs; stationery and office requisites, except furniture; drawing materials and materials
for artists; instructional and teaching materials; printed materials, posters, signage |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (016)(proposed) |
INTERNATIONAL CLASS |
016 |
TRACKED TEXT DESCRIPTION |
Paper and cardboard; Instructional and teaching materials, all in
the field of business and start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical issues, the economy, business vehicle
reimbursement, relocations, or business travel expenses; printed matter; printed matter and printed materials, namely,
books, magazines, brochures and newsletters, all in the field of business and start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical
issues, the economy, business vehicle reimbursement, relocations, or business travel expenses; photographs; stationery
and office requisites, except furniture, namely stationery, stationery folders, envelopes for stationery use, and stickers; stationery and office requisites,
except furniture; printed posters; drawing materials and materials for artists; printed paper signage; instructional and teaching materials; printed materials, posters, signage |
FINAL DESCRIPTION |
Instructional and teaching materials, all in the field of business and start-up entrepreneurship and the co-working environment, and
excluding the fields of pharmaceuticals, health and medical issues, the economy, business vehicle reimbursement, relocations, or business travel expenses; printed matter and printed materials,
namely, books, magazines, brochures and newsletters, all in the field of business and start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and
medical issues, the economy, business vehicle reimbursement, relocations, or business travel expenses; stationery and office requisites, except furniture, namely stationery, stationery folders,
envelopes for stationery use, and stickers; printed posters; printed paper signage |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Incubation services; Incubation services, namely, providing office space to emerging, start-up and existing companies; providing
facilities for business meetings and business events; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space,
namely, shared office venues with conference facilities; providing office-share services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Incubation services; Incubation services, namely, providing office
space to containing business equipment emerging, start-up and existing companies; Incubation services, namely, providing office space to emerging, start-up and
existing companies; providing facilities for business meetings and business events; business operation for others of commercial real
estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference
facilities; providing office-share services in the nature of providing work space containing business equipment to freelancers, start-ups, existing businesses
and non-profits; providing office-share services |
FINAL DESCRIPTION |
Incubation services, namely, providing office space to containing business equipment emerging, start-up and existing companies;
providing facilities for business meetings and business events; business operation for others of commercial real estate, offices and office space, business operation of commercial real estate,
offices and office space, namely, shared office venues with conference facilities; providing office-share services in the nature of providing work space containing business equipment to freelancers,
start-ups, existing businesses and non-profits |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (037)(current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Building construction of residential and commercial buildings; building repair and maintenance; installation services, namely,
installation of lighting apparatus, security systems, doors, HVAC, flooring, wiring, machinery and audiovisual equipment; construction supervision; construction project management services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (037)(proposed) |
INTERNATIONAL CLASS |
037 |
TRACKED TEXT DESCRIPTION |
Building construction of residential and commercial buildings; building repair and
maintenance; installation services, namely, installation of lighting apparatus, security systems, doors, HVAC, flooring, wiring, machinery and audiovisual
equipment; installation services, namely, installation of lighting apparatus, security systems, doors, HVAC systems, flooring, wiring, machinery and audiovisual
equipment; construction supervision; construction project management services |
FINAL DESCRIPTION |
Building construction of residential and commercial buildings; building repair and maintenance; installation services, namely,
installation of lighting apparatus, security systems, doors, HVAC systems, flooring, wiring, machinery and audiovisual equipment; construction supervision; construction project management
services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (043)(current) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
Hospitality services; providing food and beverage services; providing meeting room space; restaurant and lounge services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (043)(proposed) |
INTERNATIONAL CLASS |
043 |
TRACKED TEXT DESCRIPTION |
Hospitality services; Hospitality services, namely, providing
temporary accommodations; providing food and beverage services; providing meeting room space; restaurant
and lounge services; restaurant and cocktail lounge services |
FINAL DESCRIPTION |
Hospitality services, namely, providing temporary accommodations; providing food and beverage services; providing meeting room space;
restaurant and cocktail lounge services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-088303 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Allison Strickland Ricketts/ |
SIGNATORY'S NAME |
Allison Strickland Ricketts |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
2128135967 |
DATE SIGNED |
07/16/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Jul 16 13:34:03 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20190716133403725318-8824
2733-6206329dbef2eaca5618
aad621556a52cbe59467dc7cb
deb670921d46d46574e5d-N/A
-N/A-20190716130406701222 |
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.
88242733 WE WORK(Standard Characters, see http://uspto.report/TM/88242733/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Office action issued a partial refusal in Class 16 with respect to the printed materials, based on two prior registrations. Applicant thanks for Examining Attorney for her preliminary comments on
avoiding a likelihood of confusion with these prior marks. Applicant has now amended the identification to specify the subject matter of its printed materials, and to specifically exclude materials
that cover the subject matter of the cited registrations. Given the overall differences in the marks combined with Applicant?s narrowing amendments, Applicant respectfully submits that confusion is
not likely and requests that the refusals be withdrawn.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper and cardboard; printed matter; photographs; stationery and office requisites, except furniture; drawing materials and materials for artists; instructional and
teaching materials; printed materials, posters, signage
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.
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 2018-088303 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Paper and cardboard;
Instructional and teaching materials, all in the field of business and
start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical issues, the economy, business vehicle reimbursement, relocations, or business
travel expenses;
printed matter;
printed matter and printed materials, namely, books, magazines, brochures and
newsletters, all in the field of business and start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical issues, the economy, business
vehicle reimbursement, relocations, or business travel expenses;
photographs;
stationery and office requisites, except
furniture, namely stationery, stationery folders, envelopes for stationery use, and stickers;
stationery and office requisites, except furniture;
printed posters;
drawing materials and materials for artists;
printed paper
signage;
instructional and teaching materials;
printed materials, posters, signageClass 016 for Instructional and
teaching materials, all in the field of business and start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical issues, the economy,
business vehicle reimbursement, relocations, or business travel expenses; printed matter and printed materials, namely, books, magazines, brochures and newsletters, all in the field of business and
start-up entrepreneurship and the co-working environment, and excluding the fields of pharmaceuticals, health and medical issues, the economy, business vehicle reimbursement, relocations, or business
travel expenses; stationery and office requisites, except furniture, namely stationery, stationery folders, envelopes for stationery use, and stickers; printed posters; printed paper signage
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 [ Japan application number 2018-088303 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Incubation services; Incubation services, namely, providing office space to emerging, start-up and existing companies; providing facilities for business meetings and
business events; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with
conference facilities; providing office-share services
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.
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 2018-088303 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Incubation services;
Incubation services, namely, providing office space to containing business
equipment emerging, start-up and existing companies;
Incubation services, namely, providing office space to emerging, start-up and existing companies;
providing facilities for business meetings and business events;
business operation for others of commercial real estate, offices and office
space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities;
business operation of
commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities;
providing office-share services in the nature of providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits;
providing office-share servicesClass 035 for Incubation services, namely, providing office space to containing business equipment emerging, start-up and
existing companies; providing facilities for business meetings and business events; business operation for others of commercial real estate, offices and office space, business operation of commercial
real estate, offices and office space, namely, shared office venues with conference facilities; providing office-share services in the nature of providing work space containing business equipment to
freelancers, start-ups, existing businesses and non-profits
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 [ Japan application number 2018-088303 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Building construction of residential and commercial buildings; building repair and maintenance; installation services, namely, installation of lighting apparatus,
security systems, doors, HVAC, flooring, wiring, machinery and audiovisual equipment; construction supervision; construction project management services
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.
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 2018-088303 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Building construction of residential and commercial buildings;
building repair and maintenance;
installation services, namely, installation of lighting apparatus, security systems, doors, HVAC, flooring, wiring, machinery and audiovisual equipment;
installation services, namely, installation of lighting apparatus, security systems, doors, HVAC systems, flooring, wiring, machinery and audiovisual equipment;
construction supervision;
construction project management servicesClass 037 for Building construction of residential and commercial buildings; building
repair and maintenance; installation services, namely, installation of lighting apparatus, security systems, doors, HVAC systems, flooring, wiring, machinery and audiovisual equipment; construction
supervision; construction project management services
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 [ Japan application number 2018-088303 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Hospitality services; providing food and beverage services; providing meeting room space; restaurant and lounge services
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.
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 2018-088303 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Hospitality services;
Hospitality services, namely, providing temporary accommodations;
providing food and beverage services;
providing meeting room space;
restaurant and lounge services;
restaurant and cocktail lounge servicesClass 043 for Hospitality services, namely, providing temporary accommodations; providing food and beverage services;
providing meeting room space; restaurant and cocktail lounge services
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 [ Japan application number 2018-088303 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
SIGNATURE(S)
Response Signature
Signature: /Allison Strickland Ricketts/ Date: 07/16/2019
Signatory's Name: Allison Strickland Ricketts
Signatory's Position: Attorney of Record
Signatory's Phone Number: 2128135967
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 88242733
Internet Transmission Date: Tue Jul 16 13:34:03 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201907161334037
25318-88242733-6206329dbef2eaca5618aad62
1556a52cbe59467dc7cbdeb670921d46d46574e5
d-N/A-N/A-20190716130406701222