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. 88644746 SMRTLITE BY DSI LIGHTING (Stylized and/or with Design, see http://uspto.report/TM/88644746/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Attorney Docket: 1510-59

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

Appl. Ser. No.: 88/644,746

Filing Date: October 7, 2019

Mark: SMRTLITE BY DSI LIGHTING (Stylized Design)

Examining Attorney: Kristina Morris, Esq.

Law Office: 116

 

 

RESPONSE TO OFFICE ACTION

            This communication is in response to the Office Action transmitted by electronic mail on January 21, 2020 regarding the above-referenced application.

 

AMENDMENTS

            Please amend the present application as follows: No claim is made to the exclusive right to use “SMART LIGHT” and “LIGHTING” apart from the mark as shown.

            Please amend the present application by substituting the substitute specimen transmitted herewith showing use of the mark in connection with the goods in International Class 011.

 

REMARKS

            Attorney for Applicant respectfully acknowledges the Examining Attorney’s finding that there are no pending applications or registered marks that would bar registration of Applicant’s mark.

Disclaimer

            The Examining Attorney has indicated that Applicant must disclaim the wording “SMART LIGHT” and “LIGHTING” because it is not inherently distinctive.  Pursuant to the Examining Attorney’s instructions, the indicated wording is disclaimed herein.

 

Substitute Specimen – International Class 011

            The Examining Attorney has refused registration of Applicant’s mark alleging that specimen does not show the applied-for mark in use in commerce in International Class 011.  Pursuant to the Examining Attorney’s instructions, a substitute specimen is submitted herewith.    Further annexed is the required declaration in connection therewith.

CONCLUSION

A good faith effort has been made to place the present mark in condition for registration and such action is earnestly solicited.  If there are any questions prior to registration, the Examining Attorney is respectfully requested to contact the undersigned.

Dated: January 23, 2020

 

Respectfully submitted,

THE MARTINEZ GROUP PLLC

By: /Frank J. Martinez, Esq./

Attorney of Record, New York State Bar Member

For Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

 

THE MARTINEZ GROUP PLLC

55 Poplar Street, Suite 1-D

Brooklyn, New York 11201

718.797.2341

FM@martinezgroup.com

 

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Attorney Docket: 1510-59

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

Appl. Ser. No.: 88/644,746

Filing Date: October 7, 2019

Mark: SMRTLITE BY DSI LIGHTING (Stylized Design)

 

DECLARATION OF FRANK J. MARTINEZ

I, Frank J. Martinez, do hereby declare:

1. I am the Attorney of Record for DESIGN SOLUTIONS INTERNATIONAL, INC., the owner of the above-identified application, and I am authorized to make the following statements made herein.
2. The Examining Attorney has objected to the prior submitted specimen in International Class 011 and has required a substitute specimen showing use of the mark in commerce.
3. A substitute specimen showing use of the mark in commerce is submitted herewith.
4. The substitute specimen was in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.
5. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

 

Dated: January 23, 2020

By:   /Frank J. Martinez, Esq./            

Attorney of Record, New York State Bar member
For Applicant: DESIGN SOLUTIONS INTERNATIONAL, INC.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for LED light strips for decorative purposes; LED lights for strings, flowers, branches and other ornamental decorations; LED mood lights
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 07/03/2019 and first used in commerce at least as early as 07/03/2019 , and is now in use in such commerce.

Proposed: Class 011 for LED light strips for decorative purposes; LED lights for strings, flowers, branches and other ornamental decorations; LED mood lights
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 07/03/2019 and first used in commerce at least as early as 07/03/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 011 . The specimen(s) submitted consists of The submitted substitute specimen comprises showings of pages from Applicant's website, whereupon the subject mark is shown in close proximity to the points of inquiry and sale for the goods described in the application. .
"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

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "SMART LIGHT" and "LIGHTING" apart from the mark as shown.


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: /Frank J. Martinez, Esq./      Date: 01/23/2020
Signatory's Name: Frank J. Martinez
Signatory's Position: Attorney of Record, New York Bar member
Signatory's Phone Number: 718-797-2341


Response Signature
Signature: /Frank J. Martinez, Esq./     Date: 01/23/2020
Signatory's Name: Frank J. Martinez
Signatory's Position: Attorney of Record, New York Bar member

Signatory's Phone Number: 718-797-2341

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.

        
Serial Number: 88644746
Internet Transmission Date: Thu Jan 23 12:59:36 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001231259362
51976-88644746-700348a4c896b9a177fd4f7de
25aac47ccefa66fbc3ec74424a7eacae8837add4
-N/A-N/A-20200123121358727028