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. 88517343 SUN(Standard Characters, see http://uspto.report/TM/88517343/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 037 for Provision of online information relating to repair and maintenance for automotive, as well as medium and heavy trucks
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.

Proposed:
Tracked Text Description: Provision of online information relating to repair and maintenance for automotive, as well as medium and heavy trucks; Provision of online information relating to repair and maintenance for automobiles, namely, medium and heavy trucksClass 037 for Provision of online information relating to repair and maintenance for automobiles, namely, medium and heavy trucks
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 class of goods/services in the application:
Current: Class 042 for Provision of online information relating to diagnostics for automotive, as well as medium and heavy trucks
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.

Proposed:
Tracked Text Description: Provision of online information relating to diagnostics for automotive, as well as medium and heavy trucks; Provision of online information relating to diagnostic services for automobiles, namely, medium and heavy trucksClass 042 for Provision of online information relating to diagnostic services for automobiles, namely, medium and heavy trucks
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.

The applicant's current attorney information: Gina L. Durham, Esq.. Gina L. Durham, Esq. of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com

The applicants proposed attorney information: Gina L. Durham, Esq.. Other appointed attorneys are Keith W. Medansky, Hilary H. Remijas, Michael A. Geller, Nicole A. Chaudhari, Carissa Bouwer, Jordan Chisek, Megan Michaels, Pei Heng Li, and Eugenia Schontag. Gina L. Durham, Esq. of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com

Gina L. Durham, 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.
The applicant's current correspondence information: GINA L. DURHAM, ESQ.. GINA L. DURHAM, ESQ. of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com; debbie.ozment@dlapiper.com

The applicants proposed correspondence information: Gina L. Durham, Esq.. Gina L. Durham, Esq. of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 364903-2.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com; debbie.ozment@dlapiper.com

SIGNATURE(S)
Response Signature
Signature: /Gina Durham/     Date: 10/15/2019
Signatory's Name: Gina L. Durham, Esq.
Signatory's Position: Attorney of record,

Signatory's Phone Number: 415-836-2506

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:    GINA L. DURHAM, ESQ.
   DLA PIPER LLP (US)
   
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
Mailing Address:    Gina L. Durham, Esq.
   DLA PIPER LLP (US)
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
        
Serial Number: 88517343
Internet Transmission Date: Tue Oct 15 11:41:22 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201910151141225709
87-88517343-610279710a3cb681c6c3b3fcd241
92a524d5cd99793dd724f2fbf0a394cfe7eaea-N
/A-N/A-20191008093012611166