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. 88301998 EFIL(Standard Characters, see http://uspto.report/TM/88301998/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Management of buildings; agency services for the leasing and rental of buildings; leasing and renting of buildings; purchase and sale of buildings; agency services for the purchase and sale of buildings; real estate appraisal; providing information on buildings and land (real estate affairs); land management; agency services for the leasing and rental of land; leasing of land; purchase and sale of land; agency services for the purchase and sales of land; real estate affairs
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2019-023589 filed 02/12/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Management of buildings; agency services for the leasing and rental of buildings; real estate agency services for the leasing and rental of buildings; leasing and renting of buildings; purchase and sale of buildings; real estate brokerage, namely, purchase and sale of buildings; agency services for the purchase and sale of buildings; real estate agency services for the purchase and sale of buildings; real estate appraisal; providing information on buildings and land (real estate affairs); providing information in the field of real estate in the nature of buildings and land; land management; real estate land management services; agency services for the leasing and rental of land; residential and commercial real estate agency services for the leasing and rental of land; leasing of land; purchase and sale of land; real estate acquisition services, namely, purchase and sale of land; agency services for the purchase and sales of land; real estate affairsClass 036 for Management of buildings; real estate agency services for the leasing and rental of buildings; leasing and renting of buildings; real estate brokerage, namely, purchase and sale of buildings; real estate agency services for the purchase and sale of buildings; real estate appraisal; providing information in the field of real estate in the nature of buildings and land; real estate land management services; residential and commercial real estate agency services for the leasing and rental of land; leasing of land; real estate acquisition services, namely, purchase and sale of land; agency services for the purchase and sales of land
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-023589 filed 02/12/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Construction and building; advisory services relating to the construction and building
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2019-023589 filed 02/12/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Construction and building; Residential and commercial construction and building; advisory services relating to the construction and building; advisory services relating to residential and commercial construction and buildingClass 037 for Residential and commercial construction and building; advisory services relating to residential and commercial construction and building
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-023589 filed 02/12/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Howard N. Aronson. Howard N. Aronson of LACKENBACH SIEGEL LLP, is located at

      LACKENBACH SIEGEL BUILDING
      1 CHASE RD
      SCARSDALE, New York 10583-4156
      US
The docket/reference number is 21345.

The phone number is 914-723-4300.

The fax number is 914-723-4301.

The email address is tmefs@LSLLP.com

The applicants proposed attorney information: Howard N. Aronson. Other appointed attorneys are Nancy Dwyer Chapman, Cathy E. Shore-Sirotin, Eileen C. deVries, Lindsey S. Leibowitz. Howard N. Aronson of Lackenbach Siegel 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

      Lackenbach Siegel Bldg.
      1 Chase Rd.
      Scarsdale, New York 10583-4156
      United States
The docket/reference number is 21348.

The phone number is 914-723-4300.

The fax number is 914-723-4301.

The email address is tmefs@LSLLP.com

Howard N. Aronson 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: HOWARD N. ARONSON. HOWARD N. ARONSON of LACKENBACH SIEGEL LLP, is located at

      LACKENBACH SIEGEL BUILDING
      1 CHASE RD
      SCARSDALE, New York 10583-4156
      US
The docket/reference number is 21345.

The phone number is 914-723-4300.

The fax number is 914-723-4301.

The email address is tmefs@LSLLP.com

The applicants proposed correspondence information: Howard N. Aronson. Howard N. Aronson of Lackenbach Siegel LLP, is located at

      Lackenbach Siegel Bldg.
      1 Chase Rd.
      Scarsdale, New York 10583-4156
      United States
The docket/reference number is 21348.

The phone number is 914-723-4300.

The fax number is 914-723-4301.

The email address is tmefs@LSLLP.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
"EFIL" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) "EFIL" has no meaning in a foreign language.


Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.


Miscellaneous Statement
Japanese AN 2019-023589 has not yet issued to registration. Applicant requests suspension of SN 88301998 until AN 2019-023589 achieves registration and the certificate and its English translation become available.


SIGNATURE(S)
Response Signature
Signature: /Nancy Dwyer Chapman/     Date: 10/31/2019
Signatory's Name: Nancy Dwyer Chapman
Signatory's Position: Attorney for Applicant, New York State Bar member

Signatory's Phone Number: 914-723-4300 x160

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:    HOWARD N. ARONSON
   LACKENBACH SIEGEL LLP
   LACKENBACH SIEGEL BUILDING
   1 CHASE RD
   SCARSDALE, New York 10583-4156
Mailing Address:    Howard N. Aronson
   Lackenbach Siegel LLP
   Lackenbach Siegel Bldg.
   1 Chase Rd.
   Scarsdale, New York 10583-4156
        
Serial Number: 88301998
Internet Transmission Date: Thu Oct 31 11:11:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XXX-2019103111110006
2860-88301998-70026d0c89d4264a47aa4ac9b9
42c39ab57a4125edf3c907d9f66a58bc01c396f-
N/A-N/A-20191031105517095228