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. 88361420 UPSTREAM TECHNOLOGIES(Standard Characters, see http://uspto.report/TM/88361420/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 011 for Automated infiltrometer system comprising an infiltrometer assembly, graduated water cylinder with stainless steel base, wooden set and mallet, moisture reading meter, and tablet computer with pre-loaded software for gathering and uploading infiltration data to a cloud server for the calculation and reporting of field hydraulic conductivity of soil; Storm water sediment capture baffles; Storm water garbage traps for use in manhole sump structures

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of non-downloadable cloud-based software for data processing and reporting regarding hydraulic conductivity of soil; providing an interactive website featuring technology that allows users to upload field infiltration test data, enter user data, and generate reports regarding field hydraulic conductivity of soil; providing data analysis and reports regarding hydraulic conductivity of soil
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/00/2016 and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing temporary use of non-downloadable cloud-based software for data processing and reporting regarding hydraulic conductivity of soil; providing an interactive website featuring technology that allows users to upload field infiltration test data, enter user data, and generate reports regarding field hydraulic conductivity of soil; providing data analysis and reports regarding hydraulic conductivity of soil; water analysis information services, namely, providing data analysis and reports regarding hydraulic conductivity of soil to the stormwater, agriculture, forestry, and septic drain field industriesClass 042 for Providing temporary use of non-downloadable cloud-based software for data processing and reporting regarding hydraulic conductivity of soil; providing an interactive website featuring technology that allows users to upload field infiltration test data, enter user data, and generate reports regarding field hydraulic conductivity of soil; water analysis information services, namely, providing data analysis and reports regarding hydraulic conductivity of soil to the stormwater, agriculture, forestry, and septic drain field industries
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/00/2016 and first used in commerce at least as early as 06/00/2016 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 011 ) for Automated infiltrometer system comprising an infiltrometer assembly consisting of a graduated water cylinder with stainless steel base, removable baffle, water level detector, and pressure tube, a wooden set and mallet, moisture reading meter, and tablet computer with pre-loaded software for gathering and uploading infiltration data to a cloud server for the calculation and reporting of field hydraulic conductivity of soil
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2011 and first used in commerce at least as early as 10/00/2011 , and is now in use in such commerce.

Applicant hereby adds the following class of goods/services to the application:
New: Class 019 for Storm water sediment capture baffles; Storm water garbage traps in the nature of non-metal catch basins to trap debris for use in manhole sump structures
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2011 and first used in commerce at least as early as 10/00/2011 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 019 . The specimen(s) submitted consists of label applied to the goods .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

The applicant's current attorney information: Barbara J Grahn. Barbara J Grahn of FOX ROTHSCHILD LLP, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 204012.00003.

The phone number is 612-607-7325.

The fax number is 612-607-7100.

The email address is bgrahn@foxrothschild.com

The applicants proposed attorney information: Barbara J Grahn. Barbara J Grahn of FOX ROTHSCHILD LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 204012.00003.

The phone number is 612-607-7325.

The fax number is 612-607-7100.

The email address is bgrahn@foxrothschild.com

Barbara J Grahn 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: BARBARA J GRAHN. BARBARA J GRAHN of FOX ROTHSCHILD LLP, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 204012.00003.

The phone number is 612-607-7325.

The fax number is 612-607-7100.

The email address is bgrahn@foxrothschild.com; ipdocket@foxrothschild.com; drodrigue@foxrothschild.comm

The applicants proposed correspondence information: Barbara J Grahn. Barbara J Grahn of FOX ROTHSCHILD LLP, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 204012.00003.

The phone number is 612-607-7325.

The fax number is 612-607-7100.

The email address is bgrahn@foxrothschild.com; ipdocket@foxrothschild.com; drodrigue@foxrothschild.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use TECHNOLOGIES apart from the mark as shown.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /bjg/      Date: 11/07/2019
Signatory's Name: Barbara J Grahn
Signatory's Position: Attorney of Record, Minnesota bar member
Signatory's Phone Number: 6126077325


Response Signature
Signature: /bjg/     Date: 11/07/2019
Signatory's Name: Barbara J Grahn
Signatory's Position: Attorney of record, Minnesota bar member

Signatory's Phone Number: 6126077325

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:    BARBARA J GRAHN
   FOX ROTHSCHILD LLP
   SUITE 2000
   222 SOUTH NINTH ST
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Barbara J Grahn
   FOX ROTHSCHILD LLP
   SUITE 2000
   222 SOUTH NINTH ST
   MINNEAPOLIS, Minnesota 55402
        
RAM Sale Number: 88361420
RAM Accounting Date: 11/07/2019
        
Serial Number: 88361420
Internet Transmission Date: Thu Nov 07 20:13:09 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201911072013092
29300-88361420-700e9c2bcb0ae33fa2b847341
f75e5adade7c239a39b857ade104c38c9b4174-C
C-13072446-20191107200126416174