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. 88489710 UMBERTO.AI(Standard Characters, see http://uspto.report/TM/88489710/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for managing greenhouses and crop health, and for business management of greenhouses, including features allowing users to make climate adjustments, manage employees, schedule meetings, budget revenues and expenses, monitor crop yield and crop quality, and control the software through voice command and motion detection
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 1957176 filed 04/12/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software for managing greenhouses and crop health, and for business management of greenhouses, including features allowing users to make climate adjustments, manage employees, schedule meetings, budget revenues and expenses, monitor crop yield and crop quality, and control the software through voice command and motion detection; Downloadable and installed computer software for managing greenhouses and crop health, and for business management of greenhouses, including features allowing users to make climate adjustments, manage employees, schedule meetings, budget revenues and expenses, monitor crop yield and crop quality, and control the software through voice command and motion detectionClass 009 for Downloadable and installed computer software for managing greenhouses and crop health, and for business management of greenhouses, including features allowing users to make climate adjustments, manage employees, schedule meetings, budget revenues and expenses, monitor crop yield and crop quality, and control the software through voice command and motion detection
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 1957176 filed 04/12/2019]. 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.

The applicant's current attorney information: Catherine Parrish Lake. Catherine Parrish Lake of STOEL RIVES LLP, is located at

      201 S. MAIN STREET, SUITE 1100
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 67140/2:04.

The phone number is 801-328-3131.

The fax number is 801-578-6999.

The email address is tm-slc@stoel.com

The applicants proposed attorney information: Catherine Parrish Lake. Other appointed attorneys are Joshua G. Gigger and Zachary J. Smart. Catherine Parrish Lake of STOEL RIVES LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      201 S. MAIN STREET, SUITE 1100
      SALT LAKE CITY, Utah 84111
      United States
The docket/reference number is 67140/2:04.

The phone number is 801-328-3131.

The fax number is 801-578-6999.

The email address is tm-slc@stoel.com

Catherine Parrish Lake 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: CATHERINE PARRISH LAKE. CATHERINE PARRISH LAKE of STOEL RIVES LLP, is located at

      201 S. MAIN STREET, SUITE 1100
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 67140/2:04.

The phone number is 801-328-3131.

The fax number is 801-578-6999.

The email address is tm-slc@stoel.com

The applicants proposed correspondence information: Catherine Parrish Lake. Catherine Parrish Lake of STOEL RIVES LLP, is located at

      201 S. MAIN STREET, SUITE 1100
      SALT LAKE CITY, Utah 84111
      United States
The docket/reference number is 67140/2:04.

The phone number is 801-328-3131.

The fax number is 801-578-6999.

The email address is tm-slc@stoel.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The foreign registration has not yet registered. Applicant respectfully requests the examining attorney suspend the present application until a copy of the foreign registration is available.


SIGNATURE(S)
Response Signature
Signature: /Catherine Parrish Lake/     Date: 12/19/2019
Signatory's Name: Catherine Parrish Lake
Signatory's Position: Attorney of record, Utah bar member

Signatory's Phone Number: 801-328-3131

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:    CATHERINE PARRISH LAKE
   STOEL RIVES LLP
   
   201 S. MAIN STREET, SUITE 1100
   SALT LAKE CITY, Utah 84111
Mailing Address:    Catherine Parrish Lake
   STOEL RIVES LLP
   201 S. MAIN STREET, SUITE 1100
   SALT LAKE CITY, Utah 84111
        
Serial Number: 88489710
Internet Transmission Date: Thu Dec 19 19:12:33 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912191912336
82744-88489710-700a45f7aea816c719491bede
253d5653e89f5825c6b03b20711b669769f8a7-N
/A-N/A-20191219191143100628