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. 88331515 ITAG (Stylized and/or with Design, see http://uspto.report/TM/88331515/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 009 for encoded machine-readable labels; encoded machine-readable labels sold as an integral component of industrial, commercial, and/or personal property assets; downloadable computer software for calculating, storing and/or reporting data of industrial, commercial and/or personal property assets; electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tags
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: encoded machine-readable labels; encoded machine-readable labels, namely, labels carrying electronically-coded information; encoded machine-readable labels sold as an integral component of industrial, commercial, and/or personal property assets; encoded machine-readable labels, namely, labels carrying electronically-coded information sold as an integral component of industrial, commercial, and personal property assets; downloadable computer software for calculating, storing and/or reporting data of industrial, commercial and/or personal property assets; downloadable computer software for calculating, storing and reporting data of industrial, commercial and personal property assets; electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software for identifying, managing, locating, monitoring and tracking industrial, commercial, and personal property assets; downloadable computer software for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tagsClass 009 for encoded machine-readable labels, namely, labels carrying electronically-coded information; encoded machine-readable labels, namely, labels carrying electronically-coded information sold as an integral component of industrial, commercial, and personal property assets; downloadable computer software for calculating, storing and reporting data of industrial, commercial and personal property assets; downloadable computer software for identifying, managing, locating, monitoring and tracking industrial, commercial, and personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tags
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: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      US
The docket/reference number is 704/48.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

The applicants proposed attorney information: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      United States
The docket/reference number is 704/48.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

Jeffrey J. Schwartz 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: JEFFREY J. SCHWARTZ. JEFFREY J. SCHWARTZ of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      US
The docket/reference number is 704/48.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

The applicants proposed correspondence information: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      United States
The docket/reference number is 704/48.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
ITAG has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4860168, 4872115


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: /jjs/      Date: 10/28/2019
Signatory's Name: Jeffrey J. Schwartz
Signatory's Position: Attorney
Signatory's Phone Number: 7045521889


Response Signature
Signature: /jjs/     Date: 10/28/2019
Signatory's Name: Jeffrey J. Schwartz
Signatory's Position: Attorney

Signatory's Phone Number: 7045521889

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:    JEFFREY J. SCHWARTZ
   SCHWARTZ LAW FIRM, P.C.
   
   6100 FAIRVIEW ROAD, SUITE 1135
   CHARLOTTE, North Carolina 28210
Mailing Address:    Jeffrey J. Schwartz
   SCHWARTZ LAW FIRM, P.C.
   6100 FAIRVIEW ROAD, SUITE 1135
   CHARLOTTE, North Carolina 28210
        
Serial Number: 88331515
Internet Transmission Date: Mon Oct 28 11:00:12 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019102811001240
4648-88331515-700479d1edfda8f67ed26d0de9
96e928a4040c427ba9a2030312c9872b27ce61f5
7-N/A-N/A-20191028104927853280