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 |
88450104 |
LAW OFFICE ASSIGNED |
LAW OFFICE 123 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88450104/mark.png |
LITERAL ELEMENT |
HI WAY |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
OWNER SECTION (current) |
NAME |
Highway Equipment Company |
STREET |
1330 76th Avenue, SW |
CITY |
Cedar Rapids |
STATE |
Iowa |
ZIP/POSTAL CODE |
52404 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
OWNER SECTION (proposed) |
NAME |
Highway Equipment Company |
STREET |
1330 76th Avenue, SW |
CITY |
Cedar Rapids |
STATE |
Iowa |
ZIP/POSTAL CODE |
52404 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
EMAIL |
marketing@newleader.com |
GOODS AND/OR SERVICES SECTION (007) (current) |
INTERNATIONAL CLASS |
007 |
DESCRIPTION |
Mechanical spreaders; hydraulic spreaders; truck-mounted hauling bodies; bulk material handling equipment; material handling machines;
machine parts for material handling machines; precision tools for use in connection with material handling machines |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/13/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/13/2019 |
GOODS AND/OR SERVICES SECTION (007) (proposed) |
INTERNATIONAL CLASS |
007 |
TRACKED TEXT DESCRIPTION |
Mechanical spreaders; hydraulic spreaders; truck-mounted hauling bodies; bulk material handling equipment, namely, salt, asphalt, and other road safety, de-icing, weather-control, snow, and ice
control product spreaders; bulk material handling equipment; material handling machines, namely, salt, asphalt, and other
road safety, de-icing, weather-control, snow, and ice control product spreaders; material handling machines; component
machine parts for material handling machines.; machine parts for material handling machines; precision tools for use in
connection with material handling machines |
FINAL DESCRIPTION |
Mechanical spreaders; hydraulic spreaders; bulk material handling equipment, namely, salt, asphalt, and other road safety, de-icing,
weather-control, snow, and ice control product spreaders; material handling machines, namely, salt, asphalt, and other road safety, de-icing, weather-control, snow, and ice control product spreaders;
component machine parts for material handling machines. |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/13/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/13/2019 |
GOODS AND/OR SERVICES SECTION (012)(class added) |
INTERNATIONAL CLASS |
012 |
DESCRIPTION |
Truck-mounted hauling bodies in the nature of vehicle bodies; bulk material handling equipment, namely, tailgate spreaders and hopper
style body spreaders; multi-purpose dump bodies and asphalt bodies. |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/13/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/13/2019 |
STATEMENT TYPE |
"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 FILE NAME(S) |
ORIGINAL PDF FILE |
SPN0-381404818-20200220130250957457_._Hi_Way_Specimen.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\501\88450104\xml2\ROA0002.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\501\88450104\xml2\ROA0003.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\501\88450104\xml2\ROA0004.JPG |
SPECIMEN DESCRIPTION |
order form and pages from website. |
ATTORNEY INFORMATION (current) |
NAME |
Gail Podolsky |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
CARLTON FIELDS, PA |
INTERNAL ADDRESS |
ATTN: IP DEPARTMENT |
STREET |
PO BOX 3239 |
CITY |
TAMPA |
STATE |
Florida |
POSTAL CODE |
33601 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
404-815-2714 |
EMAIL |
trademarks@carltonfields.com |
DOCKET/REFERENCE NUMBER |
13042.36532 |
ATTORNEY INFORMATION (proposed) |
NAME |
Gail Podolsky |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
CARLTON FIELDS, PA |
INTERNAL ADDRESS |
ATTN: IP DEPARTMENT |
STREET |
PO BOX 3239 |
CITY |
TAMPA |
STATE |
Florida |
POSTAL CODE |
33601 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
404-815-2714 |
EMAIL |
trademarks@carltonfields.com |
DOCKET/REFERENCE NUMBER |
13042.36532 |
CORRESPONDENCE INFORMATION (current) |
NAME |
GAIL PODOLSKY |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@carltonfields.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
gpodolsky@carltonfields.com |
DOCKET/REFERENCE NUMBER |
13042.36532 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Gail Podolsky |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@carltonfields.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
gpodolsky@carltonfields.com |
DOCKET/REFERENCE NUMBER |
13042.36532 |
PAYMENT SECTION |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
NUMBER OF CLASSES |
1 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Gail Podolsky/ |
SIGNATORY'S NAME |
Gail Podolsky |
SIGNATORY'S POSITION |
Attorney of record, Georgia bar member |
DATE SIGNED |
02/20/2020 |
RESPONSE SIGNATURE |
/Gail Podolsky/ |
SIGNATORY'S NAME |
Gail Podolsky |
SIGNATORY'S POSITION |
Attorney of record, Georgia bar member |
SIGNATORY'S PHONE NUMBER |
4048152714 |
DATE SIGNED |
02/20/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Feb 20 13:07:08 ET 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
200220130708772496-884501
04-71077cea4b7506e4c44a9e
a35b9fea2f988c1bbf7e2fb6d
f5199abb51ec20c85514-DA-0
7085528-20200220130250957
457 |
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.
88450104 HI WAY (Stylized and/or with Design, see http://uspto.report/TM/88450104/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 007 for Mechanical spreaders; hydraulic spreaders; truck-mounted hauling bodies; bulk material handling equipment; material handling machines; machine parts for material
handling machines; precision tools for use in connection with material handling machines
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 02/13/2019
and first used in commerce at least as early as 02/13/2019 , and is now in use in such commerce.
Proposed:
Tracked Text Description: Mechanical spreaders;
hydraulic spreaders;
truck-mounted hauling bodies;
bulk material handling equipment, namely, salt, asphalt, and other road safety, de-icing, weather-control, snow, and ice control product spreaders;
bulk material handling equipment;
material handling machines, namely, salt, asphalt, and other road safety, de-icing, weather-control,
snow, and ice control product spreaders;
material handling machines;
component machine parts for material handling
machines.;
machine parts for material handling machines;
precision tools for use in connection with material handling
machinesClass 007 for Mechanical spreaders; hydraulic spreaders; bulk material handling equipment, namely, salt, asphalt, and other road safety, de-icing, weather-control, snow, and ice control
product spreaders; material handling machines, namely, salt, asphalt, and other road safety, de-icing, weather-control, snow, and ice control product spreaders; component machine parts for material
handling machines.
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 02/13/2019
and first used in commerce at least as early as 02/13/2019 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 012 for Truck-mounted hauling bodies in the nature of vehicle bodies; bulk material handling equipment, namely, tailgate spreaders and hopper style body spreaders; multi-purpose
dump bodies and asphalt bodies.
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 02/13/2019
and first used in commerce at least as early as 02/13/2019 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 012 . The specimen(s) submitted consists of order form and pages from website. .
"
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].
Original PDF file:
SPN0-381404818-20200220130250957457_._Hi_Way_Specimen.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Highway Equipment Company, a corporation of Iowa, having an address of
1330 76th Avenue, SW
Cedar Rapids, Iowa 52404
United States
Proposed: Highway Equipment Company, a corporation of Iowa, having an address of
1330 76th Avenue, SW
Cedar Rapids, Iowa 52404
United States
Email Address: marketing@newleader.com
The owner's/holder's current attorney information: Gail Podolsky. Gail Podolsky of CARLTON FIELDS, PA, is located at
ATTN: IP DEPARTMENT
PO BOX 3239
TAMPA, Florida 33601
United States
The docket/reference number is 13042.36532.
The phone number is 404-815-2714.
The email address is trademarks@carltonfields.com
The owner's/holder's proposed attorney information: Gail Podolsky. Gail Podolsky of CARLTON FIELDS, PA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located
at
ATTN: IP DEPARTMENT
PO BOX 3239
TAMPA, Florida 33601
United States
The docket/reference number is 13042.36532.
The phone number is 404-815-2714.
The email address is trademarks@carltonfields.com
Gail Podolsky 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.
Correspondence Information (current):
GAIL PODOLSKY
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@carltonfields.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gpodolsky@carltonfields.com
The docket/reference number is 13042.36532.
Correspondence Information (proposed):
Gail Podolsky
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@carltonfields.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gpodolsky@carltonfields.com
The docket/reference number is 13042.36532.
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
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: /Gail Podolsky/ Date: 02/20/2020
Signatory's Name: Gail Podolsky
Signatory's Position: Attorney of record, Georgia bar member
Response Signature
Signature: /Gail Podolsky/ Date: 02/20/2020
Signatory's Name: Gail Podolsky
Signatory's Position: Attorney of record, Georgia bar member
Signatory's Phone Number: 4048152714
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: GAIL PODOLSKY
CARLTON FIELDS, PA
ATTN: IP DEPARTMENT
PO BOX 3239
TAMPA, Florida 33601
Mailing Address: Gail Podolsky
CARLTON FIELDS, PA
ATTN: IP DEPARTMENT
PO BOX 3239
TAMPA, Florida 33601
RAM Sale Number: 88450104
RAM Accounting Date: 02/20/2020
Serial Number: 88450104
Internet Transmission Date: Thu Feb 20 13:07:08 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200220130708772
496-88450104-71077cea4b7506e4c44a9ea35b9
fea2f988c1bbf7e2fb6df5199abb51ec20c85514
-DA-07085528-20200220130250957457