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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88344058 |
LAW OFFICE ASSIGNED |
LAW OFFICE 117 |
MARK SECTION |
MARK |
http://uspto.report/TM/88344058/mark.png |
LITERAL ELEMENT |
RACE21 |
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. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer software for mining and mining automation processes, including the integration of advanced analytics with autonomous mine
equipment |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Computer software for mining and mining automation processes, including the integration of advanced
analytics with autonomous mine equipment; Downloadable computer software for mining and mining automation process, namely, downloadable software for the
integration of advanced analytics with autonomous mine equipment |
FINAL DESCRIPTION |
Downloadable computer software for mining and mining automation process, namely, downloadable software for the integration of advanced
analytics with autonomous mine equipment |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
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. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
GOODS AND/OR SERVICES SECTION (035)(class deleted) |
GOODS AND/OR SERVICES SECTION (037)(current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Providing information in the field of mining including information on mining automation, operations and technological advancements and
innovations over a global computer network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
GOODS AND/OR SERVICES SECTION (037)(proposed) |
INTERNATIONAL CLASS |
037 |
TRACKED TEXT DESCRIPTION |
Providing information in the field of mining including information on mining automation, operations and
technological advancements and innovations over a global computer network; Technical consulting in the fields of mining extraction and mining extraction
automation; Mining extraction of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via
robotics; Providing information in the field of mining extraction, namely, information concerning mining extraction automation, operations, and technological
advancements and innovations over a global computer network |
FINAL DESCRIPTION |
Technical consulting in the fields of mining extraction and mining extraction automation; Mining extraction of lead, copper, zinc,
germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining extraction, namely, information concerning
mining extraction automation, operations, and technological advancements and innovations over a global computer network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
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. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms in
the fields of mining and mining automation including real time analysis and control of assets and operations; Hosting a digital platform in the fields of mining and mining automation |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms in the fields of mining and mining automation including real time analysis and control of assets and operations; Platform as a service featuring computer software platforms for real time analysis and control of assets and mining logistical operations in the fields of mining and mining
automation; Hosting a digital platform in the fields of mining and mining automation; Application service provider,
namely, hosting a digital platform comprised of applications, software and web sites for others in the fields of mining and mining automation; Mining
exploration services in the field of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining exploration, namely, information concerning mining exploration automation, operations and technological advancements and innovations over a global
computer network; Technical consulting in the field of mining exploration |
FINAL DESCRIPTION |
Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms for
real time analysis and control of assets and mining logistical operations in the fields of mining and mining automation; Application service provider, namely, hosting a digital platform comprised of
applications, software and web sites for others in the fields of mining and mining automation; Mining exploration services in the field of lead, copper, zinc, germanium, indium, cadmium, silver,
molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining exploration, namely, information concerning mining exploration automation,
operations and technological advancements and innovations over a global computer network; Technical consulting in the field of mining exploration |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1948945 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
02/28/2019 |
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. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Canada |
ATTORNEY SECTION (current) |
NAME |
Elizabeth K. Rucki |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
BAKER BOTTS L.L.P. |
INTERNAL ADDRESS |
SUITE 900 |
STREET |
2001 ROSS AVENUE |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-953-6500 |
FAX |
214-661-4899 |
EMAIL |
daltmdept@bakerbotts.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
064483RACE21 |
ATTORNEY SECTION (proposed) |
NAME |
Elizabeth K. Rucki |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
BAKER BOTTS L.L.P. |
INTERNAL ADDRESS |
SUITE 900 |
STREET |
2001 ROSS AVENUE |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-953-6500 |
FAX |
214-661-4899 |
EMAIL |
daltmdept@bakerbotts.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
064483RACE21 |
OTHER APPOINTED ATTORNEY |
Paul Reilly; Tyler Beas |
CORRESPONDENCE SECTION (current) |
NAME |
ELIZABETH K. RUCKI |
FIRM NAME |
BAKER BOTTS L.L.P. |
INTERNAL ADDRESS |
SUITE 900 |
STREET |
2001 ROSS AVENUE |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-953-6500 |
FAX |
214-661-4899 |
EMAIL |
daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; laura.johnson@bakerbotts.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
064483RACE21 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Elizabeth K. Rucki |
FIRM NAME |
BAKER BOTTS L.L.P. |
INTERNAL ADDRESS |
SUITE 900 |
STREET |
2001 ROSS AVENUE |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-953-6500 |
FAX |
214-661-4899 |
EMAIL |
daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; cecily.porterfield@bakerbotts.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
064483RACE21 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Elizabeth K. Rucki/ |
SIGNATORY'S NAME |
Elizabeth K. Rucki |
SIGNATORY'S POSITION |
Attorney of Record, a Texas bar member of the law firm of Baker Botts LLP |
SIGNATORY'S PHONE NUMBER |
2149536926 |
DATE SIGNED |
11/11/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Nov 11 13:32:05 EST 2019 |
TEAS STAMP |
USPTO/ROA-XX.XX.XX.XXX-20
191111133205540502-883440
58-700b12f93956b132eee24f
388e5ed098dfcb74e2e92f2d8
8b54b44ef0a5e8b656-N/A-N/
A-20191111132806930432 |
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.
88344058 RACE21(Standard Characters, see http://uspto.report/TM/88344058/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Technical consulting in the fields of mining and mining automation; Implementation of robotics and remote operations in the field of mining
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for mining and mining automation processes, including the integration of advanced analytics with autonomous mine equipment
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[ Canada application number 1948945 filed 02/28/2019]. 15 U.S.C.Section 1126(d), as amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Computer software for mining and mining automation processes, including the integration of advanced analytics with autonomous mine
equipment;
Downloadable computer software for mining and mining automation process, namely, downloadable software for the integration of advanced analytics with
autonomous mine equipmentClass 009 for Downloadable computer software for mining and mining automation process, namely, downloadable software for the integration of advanced analytics with
autonomous mine equipment
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 [ Canada application number 1948945 filed 02/28/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or 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 Providing information in the field of mining including information on mining automation, operations and technological advancements and innovations over a global computer
network
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[ Canada application number 1948945 filed 02/28/2019]. 15 U.S.C.Section 1126(d), as amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Providing information in the field of mining including information on mining automation, operations and technological advancements and
innovations over a global computer network;
Technical consulting in the fields of mining extraction and mining extraction automation;
Mining extraction of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics;
Providing information in the field of mining extraction, namely, information concerning mining extraction automation, operations, and technological advancements and innovations over a global
computer networkClass 037 for Technical consulting in the fields of mining extraction and mining extraction automation; Mining extraction of lead, copper, zinc, germanium, indium, cadmium,
silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining extraction, namely, information concerning mining extraction automation,
operations, and technological advancements and innovations over a global computer network
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 [ Canada application number 1948945 filed 02/28/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or 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 Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms in the fields of mining and mining
automation including real time analysis and control of assets and operations; Hosting a digital platform in the fields of mining and mining automation
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[ Canada application number 1948945 filed 02/28/2019]. 15 U.S.C.Section 1126(d), as amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Research and development in the fields of mining and mining automation;
Platform as a service featuring
computer software platforms in the fields of mining and mining automation including real time analysis and control of assets and operations;
Platform as a
service featuring computer software platforms for real time analysis and control of assets and mining logistical operations in the fields of mining and mining automation;
Hosting a digital platform in the fields of mining and mining automation;
Application service provider, namely, hosting a digital platform
comprised of applications, software and web sites for others in the fields of mining and mining automation;
Mining exploration services in the field of lead,
copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics;
Providing information in the field of
mining exploration, namely, information concerning mining exploration automation, operations and technological advancements and innovations over a global computer network;
Technical consulting in the field of mining explorationClass 042 for Research and development in the fields of mining and mining automation; Platform as a service featuring
computer software platforms for real time analysis and control of assets and mining logistical operations in the fields of mining and mining automation; Application service provider, namely, hosting
a digital platform comprised of applications, software and web sites for others in the fields of mining and mining automation; Mining exploration services in the field of lead, copper, zinc,
germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining exploration, namely, information concerning
mining exploration automation, operations and technological advancements and innovations over a global computer network; Technical consulting in the field of mining exploration
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 [ Canada application number 1948945 filed 02/28/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
The applicant's current attorney information: Elizabeth K. Rucki. Elizabeth K. Rucki of BAKER BOTTS L.L.P., is located at
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
US
The docket/reference number is 064483RACE21.
The phone number is 214-953-6500.
The fax number is 214-661-4899.
The email address is daltmdept@bakerbotts.com
The applicants proposed attorney information: Elizabeth K. Rucki. Other appointed attorneys are Paul Reilly; Tyler Beas. Elizabeth K. Rucki of BAKER BOTTS L.L.P., is a member of the XX bar,
admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
United States
The docket/reference number is 064483RACE21.
The phone number is 214-953-6500.
The fax number is 214-661-4899.
The email address is daltmdept@bakerbotts.com
Elizabeth K. Rucki 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: ELIZABETH K. RUCKI. ELIZABETH K. RUCKI of BAKER BOTTS L.L.P., is located at
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
US
The docket/reference number is 064483RACE21.
The phone number is 214-953-6500.
The fax number is 214-661-4899.
The email address is daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; laura.johnson@bakerbotts.com
The applicants proposed correspondence information: Elizabeth K. Rucki. Elizabeth K. Rucki of BAKER BOTTS L.L.P., is located at
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
United States
The docket/reference number is 064483RACE21.
The phone number is 214-953-6500.
The fax number is 214-661-4899.
The email address is daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; cecily.porterfield@bakerbotts.com
SIGNATURE(S)
Response Signature
Signature: /Elizabeth K. Rucki/ Date: 11/11/2019
Signatory's Name: Elizabeth K. Rucki
Signatory's Position: Attorney of Record, a Texas bar member of the law firm of Baker Botts LLP
Signatory's Phone Number: 2149536926
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: ELIZABETH K. RUCKI
BAKER BOTTS L.L.P.
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
Mailing Address: Elizabeth K. Rucki
BAKER BOTTS L.L.P.
SUITE 900
2001 ROSS AVENUE
DALLAS, Texas 75201
Serial Number: 88344058
Internet Transmission Date: Mon Nov 11 13:32:05 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20191111133205540
502-88344058-700b12f93956b132eee24f388e5
ed098dfcb74e2e92f2d88b54b44ef0a5e8b656-N
/A-N/A-20191111132806930432