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. 88470055 R-ICMS FLORIDA'S REGIONAL INTEGRATED CORRIDOR MANAGEMENT SYSTEM (Stylized and/or with Design, see http://uspto.report/TM/88470055/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 039 for travel information services featuring route specific information on current traffic and highway conditions and traffic information, control, planning and management services
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: travel information services featuring route specific information on current traffic and highway conditions and traffic information, control, planning and management services; travel information services featuring route specific information on current traffic and highway conditions; traffic information services; traffic management services, namely, creating special event traffic plans for othersClass 039 for travel information services featuring route specific information on current traffic and highway conditions; traffic information services; traffic management services, namely, creating special event traffic plans for others
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.

Applicant proposes to amend the following:
Current: Class 042 for traffic planning services, traffic analysis and providing a database for traffic management including information on traffic patterns and incidents
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: traffic planning services, traffic analysis and providing a database for traffic management including information on traffic patterns and incidents; traffic planning services, traffic engineering; providing an on-line computer database in the field of traffic planning servicesClass 042 for traffic planning services, traffic engineering; providing an on-line computer database in the field of traffic planning services
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: State of Florida, Department of Transportation, a state agency having an address of
      605 Suwannee Street, MS #58
      Tallahassee, Florida 32399
      United States
      Email Address: ip@penningtonlaw.com

Proposed: State of Florida, Department of Transportation, STATE AGENCY legally organized under the laws of Florida, having an address of
      605 Suwannee Street, MS #58
      Tallahassee, Florida 32399
      United States
      Email Address: adrienne@penningtonlaw.com

The owner's/holder's current attorney information: Adrienne Love. Adrienne Love of PENNINGTON, P.A., is located at

      215 SOUTH MONROE STREET, SUITE 200
      TALLAHASSEE, Florida 32301
      United States
The docket/reference number is 19703-35810.
      The phone number is 850-222-3533.
      The email address is ip@penningtonlaw.com

The owner's/holder's proposed attorney information: Adrienne Love. Adrienne Love of PENNINGTON, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      215 SOUTH MONROE STREET, SUITE 200
      TALLAHASSEE, Florida 32301
      United States
The docket/reference number is 19703-35810.
      The phone number is 850-222-3533.
      The email address is ip@penningtonlaw.com

Adrienne Love 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):
      ADRIENNE LOVE
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@penningtonlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 19703-35810.
Correspondence Information (proposed):
      Adrienne Love
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@penningtonlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 19703-35810.

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).

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use R-ICMS Florida's Regional Integrated Corridor management System and the caution symbol comprised of an exclamation symbol inside of a triangle apart from the mark as shown.


Description of mark
The mark consists of blue, red and green stylized dividing road design running horizontally and vertically with a yellow and blue triangular caution sign comprised of a blue exclamation point inside of a yellow triangle on the vertical portion of the divided road design. Above the horizontal portion of the stylized road design is a stylized green palm tree to the left of a stylized blue car which is to the left of a stylized blue, red, yellow and green traffic light. Below the horizontal portion of the stylized road design is the blue stylized wording "R-ICMS Florida's Regional Integrated Corridor Management System." All of the foregoing is in front of a stylized yellow sun. The white in the mark represents merely background and is not claimed as part of the mark.

SIGNATURE(S)
Response Signature
Signature: /adriennelove/     Date: 03/10/2020
Signatory's Name: Adrienne Love
Signatory's Position: Attorney of Record, Florida Bar Member

Signatory's Phone Number: 850-222-3533

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:    ADRIENNE LOVE
   PENNINGTON, P.A.
   
   215 SOUTH MONROE STREET, SUITE 200
   TALLAHASSEE, Florida 32301
Mailing Address:    Adrienne Love
   PENNINGTON, P.A.
   215 SOUTH MONROE STREET, SUITE 200
   TALLAHASSEE, Florida 32301
        
Serial Number: 88470055
Internet Transmission Date: Tue Mar 10 14:01:00 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200310140100
563600-88470055-7109dc34f608384ee8f904c3
aac57e7803c4e538241bce12a6d79501efb32-N/
A-N/A-20200310112822828961