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. 88512426 BIOTHERM (Stylized and/or with Design, see http://uspto.report/TM/88512426/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 011 for Heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor; heating systems for horticultural use; environmental control equipment for greenhouses; environmental control equipment for horticultural use; irrigation systems, conduit and fittings for horticultural use; apparatus for treatment of irrigation water; apparatus for heating irrigation water; apparatus for cooling irrigation water; oxygen generators; apparatus for sensing and controlling dissolved oxygen for horticultural use; apparatus for infusing gas into liquid; gas infusers for treatment of irrigation water; apparatus for infusing oxygen into water used for irrigating crops and plants; dehumidification systems for horticultural use; air conditioning systems for horticultural use; carbon dioxide enhancement systems for horticultural use; services for the horticultural industry, namely, design of heating systems, cooling systems, irrigation systems, air conditioning systems, and nutrient management systems
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 07/31/2018 and first used in commerce at least as early as 07/31/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor; heating systems for horticultural use; heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; environmental control equipment for greenhouses; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for greenhouses; environmental control equipment for horticultural use; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and CO2 gas generators for greenhouses; irrigation systems, conduit and fittings for horticultural use; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; apparatus for treatment of irrigation water; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and carbon dioxide gas generators and diffusers for horticultural use; apparatus for heating irrigation water; water treatment equipment, namely, apparatus in the nature of gas infusers for treatment of irrigation water by increasing its dissolved oxygen content; apparatus for cooling irrigation water; apparatus for heating irrigation water, namely, hot water heating installations; oxygen generators; apparatus for cooling irrigation water, namely, irrigation water chillers and cooling installations for water; apparatus for sensing and controlling dissolved oxygen for horticultural use; oxygen generators for processing water by increasing oxygen content in the water; apparatus for infusing gas into liquid; water treatment equipment in the nature of irrigation water chillers; gas infusers for treatment of irrigation water; water treatment equipment in the nature of apparatus for infusing gas into liquid for treating irrigation water; apparatus for infusing oxygen into water used for irrigating crops and plants; water treatment equipment in the nature of gas infusers for treatment of irrigation water; dehumidification systems for horticultural use; water treatment equipment for treating irrigation water in the nature of gas infusers for infusing oxygen into water used for irrigating crops and plants; air conditioning systems for horticultural use; dehumidifiers for horticultural use; carbon dioxide enhancement systems for horticultural use; air conditioning apparatus for horticultural use; services for the horticultural industry, namely, design of heating systems, cooling systems, irrigation systems, air conditioning systems, and nutrient management systems; carbon dioxide enhancement systems in the nature of carbon dioxide generators and diffusers for horticultural useClass 011 for Heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor; heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for greenhouses; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and CO2 gas generators for greenhouses; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and carbon dioxide gas generators and diffusers for horticultural use; water treatment equipment, namely, apparatus in the nature of gas infusers for treatment of irrigation water by increasing its dissolved oxygen content; apparatus for heating irrigation water, namely, hot water heating installations; apparatus for cooling irrigation water, namely, irrigation water chillers and cooling installations for water; oxygen generators for processing water by increasing oxygen content in the water; water treatment equipment in the nature of irrigation water chillers; water treatment equipment in the nature of apparatus for infusing gas into liquid for treating irrigation water; water treatment equipment in the nature of gas infusers for treatment of irrigation water; water treatment equipment for treating irrigation water in the nature of gas infusers for infusing oxygen into water used for irrigating crops and plants; dehumidifiers for horticultural use; air conditioning apparatus for horticultural use; carbon dioxide enhancement systems in the nature of carbon dioxide generators and diffusers for horticultural use
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 07/31/2018 and first used in commerce at least as early as 07/31/2018 , and is now in use in such commerce.

"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

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Electrical controls for irrigation systems; apparatus in the nature of gas sensors for determining gas concentration and electromechanical controllers for sensing and controlling dissolved oxygen for horticultural use
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 07/31/2018 and first used in commerce at least as early as 07/31/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 009 . The specimen(s) submitted consists of photo of 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

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Services for the horticultural industry, namely, design of heating systems, cooling systems, irrigation systems, air conditioning systems, and nutrient management systems
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 07/31/2018 and first used in commerce at least as early as 07/31/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of screen capture of a website where the services are promoted; a brochure used to advertise and promote the services and which includes a questionnaire (pp. 37-39) used to collect information from customers which information used in connection with providing the services .
"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].
JPG file(s):
Specimen File1
Original PDF file:
SPN1-26016488104941035f02f9ad6f9ac01-20200320145602418505_._2019_BioTherm_Brochure.pdf
Converted PDF file(s) ( 40 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Specimen File14
Specimen File15
Specimen File16
Specimen File17
Specimen File18
Specimen File19
Specimen File20
Specimen File21
Specimen File22
Specimen File23
Specimen File24
Specimen File25
Specimen File26
Specimen File27
Specimen File28
Specimen File29
Specimen File30
Specimen File31
Specimen File32
Specimen File33
Specimen File34
Specimen File35
Specimen File36
Specimen File37
Specimen File38
Specimen File39
Specimen File40

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: BioTherm Hydronic, Inc., a corporation of California, having an address of
      476 Primero Court
      Cotati, California 94931
      United States

Proposed: BioTherm Hydronic, Inc., a corporation of California, having an address of
      476 Primero Court
      Cotati, California 94931
      United States
      Email Address: biothermtrademarks@gmail.com

The owner's/holder's current attorney information: Derek J. Westberg, Esq.. Derek J. Westberg, Esq. of WESTBERG LAW OFFICES, is located at

      569 CLYDE AVE STE 530
      MOUNTAIN VIEW, California 94043
      United States
The docket/reference number is BIO-01100.
      The phone number is 650-968-2041.
      The fax number is 6509684383.
      The email address is derek@westberglaw.com

The owner's/holder's proposed attorney information: Derek J. Westberg, Esq.. Derek J. Westberg, Esq. of WESTBERG LAW OFFICES, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      569 CLYDE AVE STE 530
      MOUNTAIN VIEW, California 94043
      United States
The docket/reference number is BIO-01100.
      The phone number is 650-968-2041.
      The fax number is 6509684383.
      The email address is derek@westberglaw.com

Derek J. Westberg, Esq. 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):
      DEREK J. WESTBERG, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@westberglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): derekwestberg@yahoo.com

The docket/reference number is BIO-01100.
Correspondence Information (proposed):
      Derek J. Westberg, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@westberglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): derekwestberg@yahoo.com

The docket/reference number is BIO-01100.

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 $550 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: /Derek J. Westberg/      Date: 03/20/2020
Signatory's Name: Derek J. Westberg, Esq.
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 6509682041


Response Signature
Signature: /Derek J. Westberg/     Date: 03/20/2020
Signatory's Name: Derek J. Westberg, Esq.
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 6509682041

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:    DEREK J. WESTBERG, ESQ.
   WESTBERG LAW OFFICES
   
   569 CLYDE AVE STE 530
   MOUNTAIN VIEW, California 94043
Mailing Address:    Derek J. Westberg, Esq.
   WESTBERG LAW OFFICES
   569 CLYDE AVE STE 530
   MOUNTAIN VIEW, California 94043
        
RAM Sale Number: 88512426
RAM Accounting Date: 03/20/2020
        
Serial Number: 88512426
Internet Transmission Date: Fri Mar 20 15:34:57 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXXX-20200320153457714058-88512426-7
1060447056a2f6fb38586c88f5ca21a7f36a927d
762ae7d4e411eb18bacdc6fd6-CC-34568707-20
200320145602418505