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. 88258466 ORCHARD(Standard Characters, see http://uspto.report/TM/88258466/mark.png) has been amended as follows:

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

This Response is to the Office Action dated February 13, 2020, refusing registration on the grounds that the specimen submitted for Class 37 allegedly shows that repairs by Applicant are not for the benefit of others. A service must be primarily for the benefit of someone other than the applicant. If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The benefit of any repair services is to Applicant’s customers as these services impact the purchase price of the customer’s home. In other words, Applicant’s customers are the primary recipient of the benefit of any repair services.

With this Response, Applicant also submits substitute specimens for Class 37 showing use of the mark in connection with, at least, “Providing information in the field of home renovations and repairs.” This information is provided to and for the benefit of Applicant’s customers.

Accordingly, Applicant submits that the original or substitute specimens demonstrate use for Class 37 and requests registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 037 for Real estate development; Providing information in the field of home renovations and repairs; Housing services, namely, development of real property, namely, repair, improvement, and new construction
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 037, the mark was first used at least as early as 01/07/2020 and first used in commerce at least as early as 01/07/2020.


Proposed:
Class 037 for Real estate development; Providing information in the field of home renovations and repairs; Housing services, namely, development of real property, namely, repair, improvement, and new construction

Deleted Filing Basis: 1(b)
In International Class 037, the mark was first used at least as early as 01/07/2020 . and first used in commerce at least as early as 01/07/2020 .

Applicant hereby submits one(or more) specimen(s) for Class 037. The specimen(s) submitted consists of screenshots of web pages taken on February 27, 2020 showing use of the mark for providing information in the field of home renovations and repairs.
"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
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: NOHO SOLUTIONS, INC., a corporation of Delaware,
Proposed: NOHO SOLUTIONS, INC., a corporation of Delaware,
      Email Address: XXXX
Correspondence Information (current):
      MATTHEW P. HINTZ, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: lstrademark@lowenstein.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 34657.12.
Correspondence Information (proposed):
      Matthew P. Hintz, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: lstrademark@lowenstein.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 34657.12.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Thomas Leineweber/      Date: 03/02/2020
Signatory's Name: Thomas Leineweber
Signatory's Position: General Counsel
Signatory's Phone Number: 9735972596


Response Signature
Signature: /Matthew Hintz/     Date: 03/03/2020
Signatory's Name: Matthew Hintz, Esq.
Signatory's Position: Attorney of record, NJ bar member

Signatory's Phone Number: 9735972500

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:    MATTHEW P. HINTZ, ESQ.
   LOWENSTEIN SANDLER LLP
   
   ONE LOWENSTEIN DRIVE
   ROSELAND, New Jersey 07068
Mailing Address:    Matthew P. Hintz, Esq.
   LOWENSTEIN SANDLER LLP
   ONE LOWENSTEIN DRIVE
   ROSELAND, New Jersey 07068
        
Serial Number: 88258466
Internet Transmission Date: Tue Mar 03 10:22:05 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.X.X-202003031022059111
87-88258466-710445ab47e961a2dcf35fcbfa32
228ba67bcdd77cf26cc9b05dc6c3944735234c-N
/A-N/A-20200302161849827178