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. 88560115 WISDOM (Stylized and/or with Design, see http://uspto.report/TM/88560115/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 Downloadable computer application software for mobile devices; Downloadable computer application software for mobile devices to enable users to browse, shop for and make purchases of spare parts for machines, equipment and devices
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/15/2019 and first used in commerce at least as early as 04/15/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable computer application software for mobile devices; Downloadable computer application software for mobile devices to access equipment, drawings and bills of material, manuals and troubleshooting guides, industrial-coatings related events, new product launches and promotions; Downloadable computer application software for mobile devices to enable users to browse, shop for and make purchases of spare parts for machines, equipment and devices; Downloadable computer application software for mobile devices to enable users to browse and shop for spare parts for machines, equipment and devices; Downloadable computer application for mobile devices for monitoring, managing, reporting, and analyzing system performance and production data for industrial coatings applications.Class 009 for Downloadable computer application software for mobile devices to access equipment, drawings and bills of material, manuals and troubleshooting guides, industrial-coatings related events, new product launches and promotions; Downloadable computer application software for mobile devices to enable users to browse and shop for spare parts for machines, equipment and devices; Downloadable computer application for mobile devices for monitoring, managing, reporting, and analyzing system performance and production data for industrial coatings applications.
Deleted Filing Basis: 1(a)
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 035 for Online services to enable users to purchase, manage, and operate machines, equipment and devices used in industrial coatings applications; Online services to enable users to purchase accessories, spare parts, tools, apparatuses, instruments, electronic devices and software for the aforesaid machines, equipment and devices; Online services featuring the resale of machines, equipment and devices used in industrial coatings applications; preparation services for maintenance contracts for the aforesaid machines, equipment and devices, namely, arranging of contractual services for third parties for maintenance of the aforesaid machines, equipment and devices; procurement, namely, purchasing of machines, equipment, and devices for other companies
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/15/2019 and first used in commerce at least as early as 04/15/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Online services to enable users to purchase, manage, and operate machines, equipment and devices used in industrial coatings applications; Online advertising services featuring spare parts, tools, apparatuses, instruments, electronic devices and software for machines, equipment and devices; Online services to enable users to purchase accessories, spare parts, tools, apparatuses, instruments, electronic devices and software for the aforesaid machines, equipment and devices; Online resale services featuring the resale of machines, equipment and devices used in industrial coatings applications; Online services featuring the resale of machines, equipment and devices used in industrial coatings applications; preparation services for maintenance contracts for the aforesaid machines, equipment and devices, namely, arranging of contractual services for third parties for maintenance of the aforesaid machines, equipment and devices; procurement, namely, purchasing of machines, equipment, and devices for other companiesClass 035 for Online advertising services featuring spare parts, tools, apparatuses, instruments, electronic devices and software for machines, equipment and devices; Online resale services featuring the resale of machines, equipment and devices used in industrial coatings applications
Deleted Filing Basis: 1(a)
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 041 for Providing educational and training services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/21/2019 and first used in commerce at least as early as 05/21/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing educational and training services; Providing access to educational services, namely, providing on-line access to classes, seminars, workshops in the field of industrial coatings and training services in the field of industrial coatingsClass 041 for Providing access to educational services, namely, providing on-line access to classes, seminars, workshops in the field of industrial coatings and training services in the field of industrial coatings
Deleted Filing Basis: 1(a)
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 hereby adds the following class of goods/services to the application:
New: Class 042 for Providing a website featuring on-line non-downloadable software that enables users to purchase, manage, and operate machines, equipment and devices used in industrial coatings applications
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: Candice M. Reder. Candice M. Reder of BAKER & HOSTETLER LLP, is located at

      KEY TOWER, SUITE
      127 PUBLIC SQUARE
      CLEVELAND, Ohio 44114
      US
The docket/reference number is 98987.020396.

The phone number is 216-861-7079.

The fax number is 216-696-0740.

The email address is bhipdocket@bakerlaw.com

The applicants proposed attorney information: Candice M. Reder. Other appointed attorneys are Deborah A. Wilcox, Christina J. Moser, John M. Mueller, Lesley M. Grossberg, Kevin M. Bovard, Lisa Bollinger Gehman. Candice M. Reder of BAKER & HOSTETLER 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

      Key Tower, Suite 2000
      127 Public Square
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is 98987.020396.

The phone number is 216-861-7079.

The fax number is 216-696-0740.

The email address is bhipdocket@bakerlaw.com

Candice M. Reder 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: CANDICE M. REDER. CANDICE M. REDER of BAKER & HOSTETLER LLP, is located at

      KEY TOWER, SUITE
      127 PUBLIC SQUARE
      CLEVELAND, Ohio 44114
      US
The docket/reference number is 98987.020396.

The phone number is 216-861-7079.

The fax number is 216-696-0740.

The email address is bhipdocket@bakerlaw.com; nordsontm@bakerlaw.com

The applicants proposed correspondence information: Candice M. Reder. Candice M. Reder of BAKER & HOSTETLER LLP, is located at

      Key Tower, Suite 2000
      127 Public Square
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is 98987.020396.

The phone number is 216-861-7079.

The fax number is 216-696-0740.

The email address is bhipdocket@bakerlaw.com; creder@bakerlaw.com; tnoel@bakerlaw.com

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: /Candice M. Reder/      Date: 01/17/2020
Signatory's Name: Candice M. Reder
Signatory's Position: Attorney of Record, Ohio Bar Member
Signatory's Phone Number: 216-861-7079


Response Signature
Signature: /Candice M. Reder/     Date: 01/17/2020
Signatory's Name: Candice M. Reder
Signatory's Position: Attorney of record, Ohio Bar member

Signatory's Phone Number: 216-861-7079

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:    CANDICE M. REDER
   BAKER & HOSTETLER LLP
   KEY TOWER, SUITE
   127 PUBLIC SQUARE
   CLEVELAND, Ohio 44114
Mailing Address:    Candice M. Reder
   BAKER & HOSTETLER LLP
   Key Tower, Suite 2000
   127 Public Square
   CLEVELAND, Ohio 44114
        
RAM Sale Number: 88560115
RAM Accounting Date: 01/17/2020
        
Serial Number: 88560115
Internet Transmission Date: Fri Jan 17 14:02:43 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020011714024349
9201-88560115-700c0e4d8984bbe341fb8d314a
d4ac3771793a7dfb8f7138292733a24a26d65-DA
-02437812-20200117114242601285