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 |
88269401 |
LAW OFFICE ASSIGNED |
LAW OFFICE 123 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
WAPOTECH |
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. |
GOODS AND/OR SERVICES SECTION (001) (current) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
Chemicals for industrial use; chemicals for cleaning for industrial use, namely, cleaning solvents, chemical adsorbents for removing
impurities from water, alkaline and acidic cleaners; chemicals for remediation for industrial use, namely, chemical preparations for use as a remediation agent by accelerating the decomposition of
organic material and biofilm; water treatment chemical products for industrial use; filtration aids and filter media for industrial use, namely, ceramic, carbon, glass, silica sand, gravel,
diatomaceous earth, perlite, dolomitic, activated carbon powder and volcanic origin based particles for use as a filtering media in the water treatment industry |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (001) (proposed) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
Chemicals for industrial use; chemicals for cleaning for industrial use, namely, cleaning solvents, chemical adsorbents for removing
impurities from water, alkaline and acidic cleaners; chemicals for remediation for industrial use, namely, chemical preparations for use as a remediation agent by accelerating the decomposition of
organic material and biofilm; water treatment chemical products for industrial use; filtration aids and filter media for industrial use, namely, ceramic, carbon, glass, silica sand, gravel,
diatomaceous earth, perlite, dolomitic, activated carbon powder and volcanic origin based particles for use as a filtering media in the water treatment industry |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
STATEMENT TYPE |
"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
FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\694\88269401\xml4 \ ROA0002.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\882\694\88269401\xml4 \ ROA0003.JPG |
SPECIMEN DESCRIPTION |
The submitted substituted specimen show photos of Wapotech products showing the use of the trademark in connection with the class description
001. |
DELETED FILING BASIS |
1(b) |
GOODS AND/OR SERVICES SECTION (005) (current) |
INTERNATIONAL CLASS |
005 |
DESCRIPTION |
Disinfectants; deodorizing cleaning preparations other than for personal use; preparations for destroying vermin; fungicides;
herbicides; algicides |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (005) (proposed) |
INTERNATIONAL CLASS |
005 |
DESCRIPTION |
Disinfectants; deodorizing cleaning preparations other than for personal use; preparations for destroying vermin; fungicides;
herbicides; algicides |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
STATEMENT TYPE |
"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
FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\694\88269401\xml4 \ ROA0004.JPG |
SPECIMEN DESCRIPTION |
The submitted substituted specimen shows a photo of a Wapotech product showing the use of the trademark in connection with the class
description 005. |
DELETED FILING BASIS |
1(b) |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Electronic hardware and instruments for water treatment applications, namely, hardware and instruments for measuring and analyzing
water impurities in the nature of temperature sensors, sensors for pH meters, turbidity meters, electrodes, photometers and particle counters; dosing devices and dosing dispensers for the addition of
water treatment chemicals and filter media, namely, dispensers, pumps, erosion feeders and diffusers for liquids, granulars, gases and chemicals in tablet form, all not for medical use; control
hardware for measuring water quality and operational parameters and equipment for signaling storing, transferring, transforming, surveillance, monitoring and regulating parameters for water treatment
and air handling, namely, water filter operation controllers, process operation controllers for water treatment installations, water level controllers, dosing equipment controllers, air quality
controllers, air handling operation controllers, and computer software for detecting and measuring water quality and hygiene |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Electronic hardware and instruments for water treatment applications, namely, hardware and instruments for measuring and analyzing
water impurities in the nature of temperature sensors, sensors for pH meters, turbidity meters, electrodes, photometers and particle counters; dosing devices and dosing dispensers for the addition of
water treatment chemicals and filter media, namely, dispensers, pumps, erosion feeders and diffusers for liquids, granulars, gases and chemicals in tablet form, all not for medical use; control
hardware for measuring water quality and operational parameters and equipment for signaling storing, transferring, transforming, surveillance, monitoring and regulating parameters for water treatment
and air handling, namely, water filter operation controllers, process operation controllers for water treatment installations, water level controllers, dosing equipment controllers, air quality
controllers, air handling operation controllers, and computer software for detecting and measuring water quality and hygiene |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (011) (current) |
INTERNATIONAL CLASS |
011 |
DESCRIPTION |
Water purification installations as parts of household or industrial installations; water filtering apparatus as parts of household or
industrial installations |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (011) (proposed) |
INTERNATIONAL CLASS |
011 |
DESCRIPTION |
Water purification installations as parts of household or industrial installations; water filtering apparatus as parts of household or
industrial installations |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (037) (current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Construction, maintenance, repair, and servicing of infrastructure facilities, in particular for public and industrial potable water
and pool water treatment plants |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (037) (proposed) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Construction, maintenance, repair, and servicing of infrastructure facilities, in particular for public and industrial potable water
and pool water treatment plants |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Engineering services in the field of conception and planning of infrastructure facilities, in particular for the treatment of public
and industrial potable water, pool water and waste water |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Engineering services in the field of conception and planning of infrastructure facilities, in particular for the treatment of public
and industrial potable water, pool water and waste water |
FIRST USE ANYWHERE DATE |
At least as early as 01/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/08/2019 |
STATEMENT TYPE |
"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
FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\694\88269401\xml4 \ ROA0005.JPG |
SPECIMEN DESCRIPTION |
The substitute specimen shows a current Wapotech website excerpt in connection with the services provided in class 042. |
DELETED FILING BASIS |
1(b) |
CORRESPONDENCE INFORMATION (current) |
NAME |
Moritz Schumann |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
mschumann@sbuslaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
cburghart@sbuslaw.com; abeierlein@sbuslaw.com |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Moritz Schumann |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
mschumann@sbuslaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
cburghart@sbuslaw.com; abeierlein@sbuslaw.com |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Moritz C. Schumann/ |
SIGNATORY'S NAME |
Moritz C. Schumann |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
646 502 5944 |
DATE SIGNED |
05/12/2020 |
RESPONSE SIGNATURE |
/Moritz C. Schumann/ |
SIGNATORY'S NAME |
Moritz C. Schumann |
SIGNATORY'S POSITION |
Attorney of Record, New York bar member |
SIGNATORY'S PHONE NUMBER |
646 502 5944 |
DATE SIGNED |
05/12/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue May 12 16:09:55 ET 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0200512160955171878-88269
401-7108b86b62498080bb2ae
6c25558c153ffb658b66784de
77dc8e4545711e79b-N/A-N/A
-20200512153301826401 |
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.
88269401 WAPOTECH(Standard Characters, see http://uspto.report/TM/88269401/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 001 for Chemicals for industrial use; chemicals for cleaning for industrial use, namely, cleaning solvents, chemical adsorbents for removing impurities from water, alkaline and acidic cleaners;
chemicals for remediation for industrial use, namely, chemical preparations for use as a remediation agent by accelerating the decomposition of organic material and biofilm; water treatment chemical
products for industrial use; filtration aids and filter media for industrial use, namely, ceramic, carbon, glass, silica sand, gravel, diatomaceous earth, perlite, dolomitic, activated carbon powder
and volcanic origin based particles for use as a filtering media in the water treatment industry
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 001, the mark was first used at least as early as 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 001 for Chemicals for industrial use; chemicals for cleaning for industrial use, namely, cleaning solvents, chemical adsorbents for removing impurities from water, alkaline and acidic cleaners;
chemicals for remediation for industrial use, namely, chemical preparations for use as a remediation agent by accelerating the decomposition of organic material and biofilm; water treatment chemical
products for industrial use; filtration aids and filter media for industrial use, namely, ceramic, carbon, glass, silica sand, gravel, diatomaceous earth, perlite, dolomitic, activated carbon powder
and volcanic origin based particles for use as a filtering media in the water treatment industry
Deleted Filing Basis: 1(b)
In International Class 001, the mark was first used at least as early as 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant hereby submits one(or more) specimen(s) for Class 001. The specimen(s) submitted consists of The submitted substituted specimen show photos of Wapotech products showing the use of the
trademark in connection with the class description 001..
"
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
Applicant proposes to amend the following:
Current:
Class 005 for Disinfectants; deodorizing cleaning preparations other than for personal use; preparations for destroying vermin; fungicides; herbicides; algicides
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 005, the mark was first used at least as early as 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 005 for Disinfectants; deodorizing cleaning preparations other than for personal use; preparations for destroying vermin; fungicides; herbicides; algicides
Deleted Filing Basis: 1(b)
In International Class 005, the mark was first used at least as early as 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant hereby submits one(or more) specimen(s) for Class 005. The specimen(s) submitted consists of The submitted substituted specimen shows a photo of a Wapotech product showing the use of the
trademark in connection with the class description 005..
"
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
Applicant proposes to amend the following:
Current:
Class 009 for Electronic hardware and instruments for water treatment applications, namely, hardware and instruments for measuring and analyzing water impurities in the nature of temperature sensors,
sensors for pH meters, turbidity meters, electrodes, photometers and particle counters; dosing devices and dosing dispensers for the addition of water treatment chemicals and filter media, namely,
dispensers, pumps, erosion feeders and diffusers for liquids, granulars, gases and chemicals in tablet form, all not for medical use; control hardware for measuring water quality and operational
parameters and equipment for signaling storing, transferring, transforming, surveillance, monitoring and regulating parameters for water treatment and air handling, namely, water filter operation
controllers, process operation controllers for water treatment installations, water level controllers, dosing equipment controllers, air quality controllers, air handling operation controllers, and
computer software for detecting and measuring water quality and hygiene
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 009, the mark was first used at least as early as 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 009 for Electronic hardware and instruments for water treatment applications, namely, hardware and instruments for measuring and analyzing water impurities in the nature of temperature sensors,
sensors for pH meters, turbidity meters, electrodes, photometers and particle counters; dosing devices and dosing dispensers for the addition of water treatment chemicals and filter media, namely,
dispensers, pumps, erosion feeders and diffusers for liquids, granulars, gases and chemicals in tablet form, all not for medical use; control hardware for measuring water quality and operational
parameters and equipment for signaling storing, transferring, transforming, surveillance, monitoring and regulating parameters for water treatment and air handling, namely, water filter operation
controllers, process operation controllers for water treatment installations, water level controllers, dosing equipment controllers, air quality controllers, air handling operation controllers, and
computer software for detecting and measuring water quality and hygiene
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 009, the mark was first used at least as early as 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant proposes to amend the following:
Current:
Class 011 for Water purification installations as parts of household or industrial installations; water filtering apparatus as parts of household or industrial installations
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 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 011 for Water purification installations as parts of household or industrial installations; water filtering apparatus as parts of household or industrial installations
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 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant proposes to amend the following:
Current:
Class 037 for Construction, maintenance, repair, and servicing of infrastructure facilities, in particular for public and industrial potable water and pool water treatment plants
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 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 037 for Construction, maintenance, repair, and servicing of infrastructure facilities, in particular for public and industrial potable water and pool water treatment plants
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 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant proposes to amend the following:
Current:
Class 042 for Engineering services in the field of conception and planning of infrastructure facilities, in particular for the treatment of public and industrial potable water, pool water and waste
water
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 042, the mark was first used at least as early as 01/08/2019 and first used in commerce at least as early as 01/08/2019.
Proposed:
Class 042 for Engineering services in the field of conception and planning of infrastructure facilities, in particular for the treatment of public and industrial potable water, pool water and waste
water
Deleted Filing Basis: 1(b)
In International Class 042, the mark was first used at least as early as 01/08/2019 . and first used in commerce at least as early as 01/08/2019 .
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of The substitute specimen shows a current Wapotech website excerpt in connection with the services
provided in class 042..
"
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
Correspondence Information (current):
Moritz Schumann
PRIMARY EMAIL FOR CORRESPONDENCE: mschumann@sbuslaw.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cburghart@sbuslaw.com; abeierlein@sbuslaw.com
Correspondence Information (proposed):
Moritz Schumann
PRIMARY EMAIL FOR CORRESPONDENCE: mschumann@sbuslaw.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cburghart@sbuslaw.com; abeierlein@sbuslaw.com
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: /Moritz C. Schumann/ Date: 05/12/2020
Signatory's Name: Moritz C. Schumann
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 646 502 5944
Response Signature
Signature: /Moritz C. Schumann/ Date: 05/12/2020
Signatory's Name: Moritz C. Schumann
Signatory's Position: Attorney of Record, New York bar member
Signatory's Phone Number: 646 502 5944
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: Moritz Schumann
SCHUMANN BURGHART LLP
1500 BROADWAY, SUITE 1902
1500 BROADWAY, SUITE 1902
NEW YORK, New York 10036
Mailing Address: Moritz Schumann
SCHUMANN BURGHART LLP
1500 BROADWAY, SUITE 1902
1500 BROADWAY, SUITE 1902
NEW YORK, New York 10036
Serial Number: 88269401
Internet Transmission Date: Tue May 12 16:09:55 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020051216095517
1878-88269401-7108b86b62498080bb2ae6c255
58c153ffb658b66784de77dc8e4545711e79b-N/
A-N/A-20200512153301826401