TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88278589 SUNSOLUTIONS (Stylized and/or with Design, see http://uspto.report/TM/88278589/mark.png) has been amended as follows:

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

Applicant files this amendment in response to the Office Action dated August 2, 2019. In this regard, the Office approved the disclaimer and the addition of and payment of fees for two classes of services, added by way of the prior-filed amendment. The only remaining issue requiring resolution is the requirement for a definite and acceptable identifications of services for Classes 35, 37, and 42. Here, the services descriptions for Classes 37 and 42 have been amended in a manner wholly consistent with the descriptions proposed in the Office Action. The services descriptions for Class 35 has been amended, in part, in a manner wholly consistent with the proposed description in the Office Action. The services descriptions for Class 35 also clarity around the phrase "commercial services for business-to-business transactions." While Applicant attempted to resolve this issue in its prior amendment, the Office asserts the previously-amended services descriptions are outside the scope of either the original description, as filed, or as acceptably amended. In Class 35, Applicant used the term "commercial" in the description "commercial services for business-to- business transactions" in relation to the definitions of "commercial" meaning (i) "concerned with or engaged in commerce," or (ii) "making or intended to make a profit" and not the alternative definition of (iii) "a television or radio advertisement." The description "commercial services" offers support for certain services description in Class 35, as amended. Applicant is now attempted to use common commercial terms relating to "commercial services" including business consulting, operations management, and business management, all of which are encompassed in Class 35. More specifically, the specific services description provides: "Advertising, marketing and providing commercial consulting, management, and business operations services for business-to-business transactions in the field of gasoline retail stores and convenience stores." Applicant believes that the services description is within the scope of the original description of services, namely, "commercial services for business-to-business transactions, namely, engineering, maintenance, branding, merchandising/c-store services, technical services, IT Services, and marketing services." If the Office disagrees, then such services description can be deleted from the application, which should proceed with the acceptable services descriptions in Classes 35, 37, and 42. If any latent issue presents, then the Office is asked to contact the undersigned attorney for application. In any event, Applicant believes that the application is in condition or acceptance for publication. An early action to this affect is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consulting services relating to product distribution, operations management services, logistics, supply chain, and distribution solutions; Business management consultation in the field of gasoline storage, shipment and distribution, retail gasoline store services, and convenience store services; Advisory services relating to business management and business operations Advertising and marketing services; Branding services in the nature of rebranding gasoline retail stores and convenience stores; Business merchandising display services; Retail store services featuring convenience store items and gasoline
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.

Proposed:
Tracked Text Description: Business consulting services relating to product distribution, operations management services, logistics, supply chain, and distribution solutions; Advertising and marketing services; Business management consultation in the field of gasoline storage, shipment and distribution, retail gasoline store services, and convenience store services; Branding services in the nature of rebranding gasoline retail stores and convenience stores; Advisory services relating to business management and business operations Advertising and marketing services; Business merchandising display services; Retail store services featuring convenience store items and gasoline; Advertising, marketing and providing commercial consulting, management, and business operations services for business-to-business transactions in the field of gasoline retail stores and convenience storesClass 035 for Advertising and marketing services; Branding services in the nature of rebranding gasoline retail stores and convenience stores; Business merchandising display services; Retail store services featuring convenience store items and gasoline; Advertising, marketing and providing commercial consulting, management, and business operations services for business-to-business transactions in the field of gasoline retail stores and convenience stores
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Building maintenance and repair; Maintenance of building equipment, plumbing, and HVAC systems; Repair or maintenance of gasoline station and convenience store equipment; Construction, maintenance and renovation of property; Building construction, remodeling, renovation, and repair; Physical maintenance in the field of gasoline and fuel distribution facilities
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.

Proposed:
Tracked Text Description: Building maintenance and repair; Maintenance of building equipment, plumbing, and HVAC systems; Repair or maintenance of gasoline station and convenience store equipment; Construction, maintenance and renovation of property; Building construction, remodeling, renovation, and repair; Physical maintenance of the field of gasoline and fuel distribution facilities; Physical maintenance in the field of gasoline and fuel distribution facilitiesClass 037 for Building maintenance and repair; Maintenance of building equipment, plumbing, and HVAC systems; Repair or maintenance of gasoline station and convenience store equipment; Construction, maintenance and renovation of property; Physical maintenance of the field of gasoline and fuel distribution facilities
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Information technology (IT) consulting and integration services; computer services, namely, on-site and remote management of the information technology (IT) systems of others; outsource service providers in the field of information technology; Engineering design services; Engineering services for building and property condition assessment, facility management, repair and restoration
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.

Proposed:
Tracked Text Description: Information technology (IT) consulting and integration services; computer services, namely, on-site and remote management of the information technology (IT) systems of others; outsource service providers in the field of information technology; Engineering design services; Engineering services for building and property condition assessment, facility management, repair and restoration; Engineering services in the field of building and property condition assessment, facility management, repair and restorationClass 042 for Information technology (IT) consulting and integration services; computer services, namely, on-site and remote management of the information technology (IT) systems of others; outsource service providers in the field of information technology; Engineering design services; Engineering services in the field of building and property condition assessment, facility management, repair and restoration
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.

The applicant's current attorney information: Philip J. Foret. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5772.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed attorney information: Philip J. Foret. Other appointed attorneys are David P. Fitzgibbon. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 184753-5772.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

Philip J. Foret submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: PHILIP J. FORET. PHILIP J. FORET of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5772.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed correspondence information: Philip J. Foret. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 184753-5772.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Philip J. Foret/     Date: 02/03/2020
Signatory's Name: Philip J. Foret
Signatory's Position: Attorney for Applicant, U.S.P.T.O. Registration No. 51689

Signatory's Phone Number: 610-640-5800

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    PHILIP J. FORET
   STRADLEY RONON STEVENS & YOUNG, LLP
   
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
Mailing Address:    Philip J. Foret
   STRADLEY RONON STEVENS & YOUNG, LLP
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
        
Serial Number: 88278589
Internet Transmission Date: Mon Feb 03 14:59:06 EST 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.X-202002031459068347
48-88278589-700c82a7c15a7a38e5f7c24cae5e
117960d124d9f2aa8db0e14acf311b695eb455-N
/A-N/A-20200203144049790680