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. 88270499 C2F(Standard Characters, see http://uspto.report/TM/88270499/mark.png) has been amended as follows:

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

Please see the actual Argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: PDF of Applicant's actual Argument text
Original PDF file:
evi_4722721062-2020061112 2359424253_._C2F_Response.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for engineering services, namely, engineering in the field of photonics and optics; research, design, development, and testing services in the field of engineering for photonics and optics; product development in the field of photonics and optics; consulting in the field of engineering, namely, in the field of photonics and optics
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 04/23/2018 and first used in commerce at least as early as 04/23/2018.


Proposed:
Class 042 for engineering services, namely, engineering in the field of photonics and optics; research, design, development, and testing services in the field of engineering for photonics and optics; product development in the field of photonics and optics; consulting in the field of engineering, namely, in the field of photonics and optics

Deleted Filing Basis: 1(b)
In International Class 042, the mark was first used at least as early as 04/23/2018 . and first used in commerce at least as early as 04/23/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of capture of http://vision.engineering/software/clear2fire/ webpage prominently displaying mark in connection with the services.
"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].
Original PDF file:
SPU0-4722721062-202006111 22359424253_._C2F_substit ute_specimen.pdf
Converted PDF file(s) ( 5 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Vision Engineering Solutions, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      3710 North Courtenay Parkway, Suite 102
      Merritt Island, Florida 32953
      United States

Proposed: Vision Engineering Solutions, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      3710 North Courtenay Parkway, Suite 102
      Merritt Island, Florida 32953
      United States
      Email Address: XXXX
Correspondence Information (current):
      OLIVIA M. CLAVIO
      PRIMARY EMAIL FOR CORRESPONDENCE: oclavio@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com

The docket/reference number is 57564-289781.
Correspondence Information (proposed):
      Olivia M. Clavio
      PRIMARY EMAIL FOR CORRESPONDENCE: oclavio@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; bssmith@btlaw.com; pward@btlaw.com

The docket/reference number is 57564-289781.

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: /bssmith/      Date: 06/11/2020
Signatory's Name: Brittany S. Smith
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member
Signatory's Phone Number: 317-236-1313


Response Signature
Signature: /bssmith/     Date: 06/11/2020
Signatory's Name: Brittany S. Smith
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member

Signatory's Phone Number: 317-236-1313

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:    OLIVIA M. CLAVIO
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204
Mailing Address:    Olivia M. Clavio
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204
        
Serial Number: 88270499
Internet Transmission Date: Thu Jun 11 12:42:05 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020061112420508
8636-88270499-710e15fccbcc19685d1cc758b9
3baf898eaf84f074f9c6ec4bc66df137aba0ff-N
/A-N/A-20200611122359424253