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. 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 submits this Amendment in response to the February 27, 2019 Office Action.

 

It is noted that the Office’s search of its databases did not identify any pending or registered marks that provides a basis to refuse registration of Applicant’s mark.

 

The Office raises several issues concerning the description of services that must be resolved. In this regard, Applicant is amending the description in a manner that is within the scope of the pending description to include properly-classified descriptions that are specific and definite. The catchall phrase “and related goods and services” is being deleted from the description. Applicant requests acceptance of the description, as amended, and reclassified.

 

This amendment places the application in condition for acceptance for publication. An early action to this effect 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 Advertising, marketing and providing commercial services for business-to-business transactions, namely, engineering, maintenance, branding, merchandising/c-store services, technical services, IT Services, and marketing services; and related goods and 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.

Proposed:
Tracked Text Description: Advertising, marketing and providing commercial services for business-to-business transactions, namely, engineering, maintenance, branding, merchandising/c-store services, technical services, IT Services, and marketing services; Business consulting services relating to product distribution, operations management services, logistics, supply chain, and distribution solutions; and related goods and services; 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 gasolineClass 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
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 hereby adds the following class of goods/services to the application:
New: 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
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 hereby adds the following class of goods/services to the application:
New: 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
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.

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Philip J. Foret/     Date: 05/24/2019
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 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.

        
RAM Sale Number: 88278589
RAM Accounting Date: 05/28/2019
        
Serial Number: 88278589
Internet Transmission Date: Fri May 24 13:18:16 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019052413181613
5786-88278589-62051d2ae56da1c11dfe1c83b8
8afa03536599cd3b527a89cfc5cb9c6b9d5c9d-D
A-1805-20190524120732755841