Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88781315 GLOBALIZING FLOATING WIND(Standard Characters, see http://uspto.report/TM/88781315/mark.png) has been amended as follows:

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

Applicant responds to the Nonfinal Office Action issued October 25, 2021 as follows: SECTION 2(E)(1) MERELY DESCRIPTIVE REFUSAL The Examining Attorney has refused registration of Applicant's mark, claiming that Applicant's mark merely describes a feature, purpose or use of Applicant's goods and services. Applicant respectfully disagrees with the Examiner's findings and continues to argue that its mark is merely suggestive, and upon the Examiner's acceptance of the new specimens being submitted with this Response, Applicant believes that the mark in question will be eligible for registration on the Supplemental Register. SECTION 1(b) APPLICATION NOT YET ELIGIBLE FOR SUPPLEMENTAL REGISTER The Examining Attorney has indicated that Applicant's mark is ineligible for registration on the supplemental register because Applicant has not filed a divisional application for the Class 42 Services. Applicant filed the Request to Divide this application on 11/17/2021, and is providing a copy of the filing receipt with this Response. IDENTIFICATION OF GOODS AND SERVICES - PARTIAL REQUIREMENT Applicant accepts the Examiner's suggestion to add Class 6 with the following goods description: "Wind turbine support structures in the nature of pre-fabricated metal architectural columns; wind turbine prefabricated metal platforms" and is submitting specimens in support of this additional class with this response. Applicant accepts the Examiner's substitution of goods description for Class 7, namely: "Wind turbines and structural parts therefor". Applicant is submitting specimens new specimens of use for classes 37 and 42, and upon acceptance, will move those classes to the Supplemental Register as well.

EVIDENCE
Evidence has been attached: a screenshot of a Request to Divide Application No. 88781315 filed on November 17, 2021.
Original PDF file:
evi_7163774-2021112216514 0422324_._88781315.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 007 for (Based on Intent to Use)Wind turbines and structural parts therefor; wind turbine support structures; wind turbine platforms

Applicant hereby deletes the following class of goods/services from the application.
Class 040 for (Based on Intent to Use)Generation of electrical power; Consulting services in the field of wind energy production

Applicant proposes to amend the following:

Current:
Class 037 for (Based on Intent to Use)Construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; maintenance services for wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; construction consultation; construction planning
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: (Based on Intent to Use)Construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; Construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; maintenance services for wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; construction consultation; construction planningClass 037 for Construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; maintenance services for wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; construction consultation; construction planning

Deleted Filing Basis: 1(b)
In International Class 037, the mark was first used at least as early as 01/29/2020 . and first used in commerce at least as early as 03/02/2020 .

Applicant hereby submits one(or more) specimen(s) for Class 037. The specimen(s) submitted consists of Screenshots taken from Applicant's website which displays Applicant's mark in association with Applicant's goods Screen grab from a YouTube video dated February 2020 that prominently displays the mark, as well as showing and describing the goods and the services, here: http://www.youtube.com/watch.
"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].
Original PDF file:
SPU1-7163774-202111221651 40422324_._specimen1_2020 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU1-7163774-202111221651 40422324_._specimen1_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU1-7163774-202111221651 40422324_._specimen2_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant proposes to amend the following:

Current:
Class 042 for (Based on Use in Commerce)Design and development of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures
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 01/29/2020 and first used in commerce at least as early as 03/02/2020 , and is now in use in such commerce.


Proposed:
Class 042 for (Based on Use in Commerce)Design and development of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures
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 01/29/2020 and first used in commerce at least as early as 03/02/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of Screenshots taken from Applicant's website which displays Applicant's mark in association with Applicant's goods Screen grab from a YouTube video dated February 2020 that prominently displays the mark, as well as showing and describing the goods and the services, here: http://www.youtube.com/watch.
"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].
Original PDF file:
SPU3-7163774-202111231928 47104897_._specimen1_2020 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU3-7163774-202111231928 47104897_._specimen1_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU3-7163774-202111231928 47104897_._specimen2_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant hereby adds the following class of goods/services to the application:
New: Class 006 for Wind turbine support structures in the nature of pre-fabricated metal architectural columns; wind turbine prefabricated metal platforms
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 01/29/2020 and first used in commerce at least as early as 03/02/2020 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 006 . The specimen(s) submitted consists of Screenshots taken from Applicant's website which displays Applicant's mark in association with Applicant's goods Specimen 1 is a screen grab from a YouTube video dated February 2020 that prominently displays the mark, as well as showing and describing the goods and the services, here: http://www.youtube.com/watch .
"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].
Original PDF file:
SPN0-7163774-202111221651 40422324_._specimen1_2020 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPN0-7163774-202111221651 40422324_._specimen1_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPN0-7163774-202111221651 40422324_._specimen2_2021 _Globalizing-floating-win d.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      Michael E.Dergosits
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@dergnoah.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mdergosits@dergnoah.com; rnebb@dergnoah.com; swilliams@dergnoah.com

The docket/reference number is 1212.17.01US.
Correspondence Information (proposed):
      Michael E.Dergosits
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@dergnoah.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mdergosits@dergnoah.com; rnebb@dergnoah.com; swilliams@dergnoah.com

The docket/reference number is 1212.17.01US.

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 $350 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: /Michael E. Dergosits/      Date: 11/24/2021
Signatory's Name: Michael E. Dergosits
Signatory's Position: Attorney for Applicant
Signature method: Sent to third party for signature

Response Signature
Signature: /Michael E. Dergosits/     Date: 11/24/2021
Signatory's Name: Michael E. Dergosits
Signatory's Position: Attorney for Applicant
Signature method: Sent to third party for signature

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:    Michael E.Dergosits
   DERGOSITS & NOAH LLP
   
   ONE EMBARCADERO CENTER, SUITE 720
   SAN FRANCISCO, California 94111
Mailing Address:    Michael E.Dergosits
   DERGOSITS & NOAH LLP
   ONE EMBARCADERO CENTER, SUITE 720
   SAN FRANCISCO, California 94111
        
PAYMENT: 88781315
PAYMENT DATE: 11/24/2021
        
Serial Number: 88781315
Internet Transmission Date: Wed Nov 24 17:59:05 ET 2021
TEAS Stamp: USPTO/ROA-XX.X.XX.XX-2021112417590570772
3-88781315-7818b1185f3ade325dddad76427d1
2fa253f1c1615116d0d6e67425b8fdbfc5f6-DA-
59031851-20211123192847104897