| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88317132 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88317132/mark.png |
| LITERAL ELEMENT | ROOF HUB |
| 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. |
| ARGUMENT(S) | |
|
In response to the Office Action dated May 7, 2019, Applicant respectfully submits the following information and comments.
Requirement for Disclaimer Applicant accepts the following disclaimer:
Amendment to Identification of Services in Class 35
Applicant accepts the Examining Attorney's proposed amendments to clarify the identification of services in Class 35 as follows:
Refusal based on Unacceptable Specimen for Class 35
Registration of the applied-for mark has been refused under Trademark Act Sections 1 and 45 because “the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application . . . Specifically, the specimens appear to show use of the mark with software and access to that software using a mobile application.” See May 7, 2019 Office Action, pp. 1-2.
Applicant respectfully submits that the specimen submitted with the application for services in Class 35 should be accepted because the specimen shows the mark being used in advertising material for the identified services.
A service mark is deemed to be in “use in commerce” when it is “used or displayed in the sale or advertising of services and the services are rendered in commerce[.]” 15 U.S.C. § 1127. The TMEP provides additional guidance with respect to the use of service marks for services that involve software: “Software applications (‘apps’) for smartphones and computer tablets are now commonly used to provide online services. Apps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services.” TMEP § 1301.04(h)(iv)(D).
The specimen submitted with the application is in the nature of a brochure advertising Applicant’s identified services in Class 35. To address the Examining Attorney’s concerns regarding use of the mark with software, Applicant clarifies that the identified services in Class 35 are provided to consumers via a mobile application referenced in the text of the specimen.
Applicant’s specimen should be accepted because it shows the applied-for mark used directly in connection with the relevant services in textual statements describing the services, and the mark appears prominently in close proximity to explicit textual references to the services. See TMEP § 1301.04(i), Example 5 and Example 15. Accordingly, the specimen shows that the mark is in use in commerce because it shows the mark being used in the advertising of services that are rendered in commerce.
Having responded to all issues raised in the Office Action dated May 7, 2019, Applicant respectfully requests that the Examining Attorney withdraw the refusal of this application and pass it to publication. |
|
| GOODS AND/OR SERVICES SECTION (009)(no change) | |
| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Providing real-time information concerning orders, deliveries and invoices for roofing and building materials | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/25/2018 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/25/2018 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Provision of information concerning commercial sales and management of logistics, namely, real-time information concerning order status, delivery status and invoices for roofing and building materials | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/25/2018 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/25/2018 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use ROOF apart from the mark as shown. |
| ATTORNEY SECTION (current) | |
| NAME | Linda M. Merritt |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | NORTON ROSE FULBRIGHT US LLP |
| STREET | 2200 ROSS AVENUE, SUITE 3600 |
| CITY | DALLAS |
| STATE | Texas |
| POSTAL CODE | 75201-7932 |
| COUNTRY | US |
| PHONE | 214-855-8000 |
| FAX | 214-855-8200 |
| doipdocket@nortonrosefulbright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | T0038US.AP1 |
| ATTORNEY SECTION (proposed) | |
| NAME | Linda M. Merritt |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | NORTON ROSE FULBRIGHT US LLP |
| STREET | 2200 ROSS AVENUE, SUITE 3600 |
| CITY | DALLAS |
| STATE | Texas |
| POSTAL CODE | 75201-7932 |
| COUNTRY | United States |
| PHONE | 214-855-8000 |
| FAX | 214-855-8200 |
| doipdocket@nortonrosefulbright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | T0038US.AP1 |
| OTHER APPOINTED ATTORNEY | Chandler Stephens and all other attorneys with Norton Rose Fulbright US LLP |
| CORRESPONDENCE SECTION (current) | |
| NAME | LINDA M. MERRITT |
| FIRM NAME | NORTON ROSE FULBRIGHT US LLP |
| STREET | 2200 ROSS AVENUE, SUITE 3600 |
| CITY | DALLAS |
| STATE | Texas |
| POSTAL CODE | 75201-7932 |
| COUNTRY | US |
| PHONE | 214-855-8000 |
| FAX | 214-855-8200 |
| doipdocket@nortonrosefulbright.com; chris.andersen@nortonrosefulbright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | T0038US.AP1 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Linda M. Merritt |
| FIRM NAME | NORTON ROSE FULBRIGHT US LLP |
| STREET | 2200 ROSS AVENUE, SUITE 3600 |
| CITY | DALLAS |
| STATE | Texas |
| POSTAL CODE | 75201-7932 |
| COUNTRY | United States |
| PHONE | 214-855-8000 |
| FAX | 214-855-8200 |
| doipdocket@nortonrosefulbright.com; chandler.stephens@nortonrosefulbright.com; chris.andersen@nortonrosefulbright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | T0038US.AP1 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Chandler Stephens/ |
| SIGNATORY'S NAME | Chandler Stephens |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 214-855-8000 |
| DATE SIGNED | 09/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 11 20:14:23 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0190911201423120388-88317 132-61088a0bb802b2395ab79 397a78329f750fbf1991e47b1 21b96be97dc656e3e3f1-N/A- N/A-20190911200906446134 |
| 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) |
In response to the Office Action dated May 7, 2019, Applicant respectfully submits the following information and comments.
Requirement for Disclaimer
Applicant accepts the following disclaimer:
“No claim is made to the exclusive right to use “ROOF” apart from the mark as shown.”
Amendment to Identification of Services in Class 35
Applicant accepts the Examining Attorney's proposed amendments to clarify the identification of services in Class 35 as follows:
“Provision of information concerning commercial sales and management of logistics, namely, real-time information concerning order status, delivery status, and invoices for roofing and building materials.”
Refusal based on Unacceptable Specimen for Class 35
Registration of the applied-for mark has been refused under Trademark Act Sections 1 and 45 because “the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application . . . Specifically, the specimens appear to show use of the mark with software and access to that software using a mobile application.” See May 7, 2019 Office Action, pp. 1-2.
Applicant respectfully submits that the specimen submitted with the application for services in Class 35 should be accepted because the specimen shows the mark being used in advertising material for the identified services.
A service mark is deemed to be in “use in commerce” when it is “used or displayed in the sale or advertising of services and the services are rendered in commerce[.]” 15 U.S.C. § 1127. The TMEP provides additional guidance with respect to the use of service marks for services that involve software: “Software applications (‘apps’) for smartphones and computer tablets are now commonly used to provide online services. Apps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services.” TMEP § 1301.04(h)(iv)(D).
The specimen submitted with the application is in the nature of a brochure advertising Applicant’s identified services in Class 35. To address the Examining Attorney’s concerns regarding use of the mark with software, Applicant clarifies that the identified services in Class 35 are provided to consumers via a mobile application referenced in the text of the specimen.
Applicant’s specimen should be accepted because it shows the applied-for mark used directly in connection with the relevant services in textual statements describing the services, and the mark appears prominently in close proximity to explicit textual references to the services. See TMEP § 1301.04(i), Example 5 and Example 15. Accordingly, the specimen shows that the mark is in use in commerce because it shows the mark being used in the advertising of services that are rendered in commerce.
Having responded to all issues raised in the Office Action dated May 7, 2019, Applicant respectfully requests that the Examining Attorney withdraw the refusal of this application and pass it to publication.