Extension of Time to File SOU

PTO- 1581

Approved for use through 03/31/2024. OMB 0651-0054

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- 1581

Approved for use through 03/31/2024. OMB 0651-0054

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

SOU Extension Request
(15 U.S.C. Section 1051(d))

To the Commissioner for Trademarks:

MARK: JH (stylized and/or with design, see http://uspto.report/TM/88786425/mark.png)
SERIAL NUMBER: 88786425

OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: James Hardie Technology Limited, having an address of
      Europa House, Second Floor
      Harcourt Centre, Harcourt Street
      Dublin 2,
      Ireland
      Email: XXXX
Proposed: James Hardie Technology Limited, having an address of
      Europa House, Second Floor
      Harcourt Centre, Harcourt Street
      Dublin 2,
      Ireland
      Phone:
      Fax:
      Email: XXXX

The owner requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application.    The Notice of Allowance mailing date was 12/29/2020.

For International Class 002:
Current identification: Paints; coatings, namely, stains, primers, paint sealers, varnishes, clear finishes, and colored stains for exterior and interior use on a variety of substrates; paints, primers, paint sealers, coatings in the nature of stains and clear finishes, and colored coatings in the nature of stains, all for non-metal building materials and fiber cement materials; paints, primers, paint sealers, coatings in the nature of stains and clear finishes, all pre-applied on building and construction products

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 006:
Current identification: Metal building flashing; metal fasteners, namely, bolts, nails, nuts, rivets, and screws; metal fasteners, namely, ballistic fasteners being collated metal nails to be used with nail guns; metal trim for buildings; metal building materials, namely, metal tab fasteners in the nature of flat metal sheets or tabs used for attaching building and construction products to a variety of substrates; metal building materials, namely, steel furrings, furring channels and furring strips; metal threaded fasteners

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 007:
Current identification: Blades for power tools; power saw blades; dry cutting power saw blades for engineered cement composite building materials

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 008:
Current identification: Score and snap utility knives; score and snap working knives; score and snap knives for fiber cement materials; scoring knives for fiber cement and backerboards; hand-operated cutting tools

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 017:
Current identification: Non-woven, non-perforated polyolefin vapor barriers used in the construction industry as a water vapor barrier, moisture barrier, and air infiltration barrier to protect and cover building structures; weatherizing membranes and vapor barrier; plastic sheeting used in the construction industry as a vapor barrier; laminated vapor barrier; Sheets of plastic fabric used as an insulating infiltration barrier in building construction; building insulation; waterproofing membranes for foundations of buildings; non-metal weather strips for buildings; caulking materials; waterproof sealants; sealants for buildings; adhesive waterproof tape, other than stationery and not for medical or household purposes; waterproof duct tape and waterproof wallboard joint tape; adhesive tape for industrial and commercial use

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 019:
Current identification: Non-metal construction materials, namely, trim, exterior and interior boards, fiber cement boards, fiber cement panels, soffits, fascia, planks, siding, cladding, and fiber cement underlayment; non-metal construction materials, namely, trim, exterior and interior boards, fiber cement boards, fiber cement panels, soffits, fascia, planks, siding, and cladding having pre-applied finish coatings, paint coatings, or stain coatings; non-metal building materials in the nature of underlayment and cement composite boards for flooring, countertops, walls and ceilings; non-metal water and moisture resistant underlayment in the nature of boards and panels for construction, in particular for flooring, countertops, walls, and ceiling; non-metal architectural mouldings and finish trim; non-metal building flashing; non-metal roof flashing; seam tape for building; tape, namely, building seam tape, which is made out of polypropylene coated with an adhesive and used to join barrier materials and cover wall, attic, and other areas of outside building structures; environmental control barriers, namely, fabric wall systems used for environmental separation and containment in industrial and commercial applications; waterproofing membranes for roofing, floors and walls; waterproof membrane for use as a floor underlayment

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 035:
Current identification: Advertising, marketing and promotion services; promoting the sale of building and construction products through the distribution of printed promotional materials of others, by providing hypertext links to the websites of others, namely, of dealers, suppliers and distributors of building and construction products, by preparation of custom advertisements and custom promotional products for others in the nature of branded apparel, and by providing sales promotion consultation to others; advertising, marketing, and promotional services in the nature of providing an online website portal that connects buyer customers to the seller services of others; electronic commerce services, namely, providing information online about products and services for advertising and sales purposes; business advisory services and consultancy related to the selection and purchase of goods; online retail store services featuring building and construction materials, apparel, banners, signage, and custom-made marketing and promotional goods for businesses; providing cooperative advertising and marketing services for suppliers and distributors of building and construction products, for contractor services, and for home and commercial construction services; providing an online commercial information directory on the internet consisting of advertisements and marketing information for use by dealers, suppliers, distributors and installers of building and construction products; providing consumer information in the field of building and construction provided online; online ordering services, namely, providing a website for builders, contractors and construction sales professionals for placing orders and tracking the status of orders in the field of building and construction products and materials and tools; conducting incentive award programs for customers and employees to promote excellent service and performance in the fields of contracting and home and commercial construction; conducting incentive award programs to promote the sale of building and construction products; providing incentive awards programs for commercial, promotional, and advertising purposes in the nature of providing preferred customers and member businesses with additional features and benefits through affiliation with a preferred program; membership club services, namely, providing on-line information to member businesses of a membership club in the fields of advertising and marketing and business development in the nature of business growth and sales generation, and providing advertising services for member businesses on distribution lists and websites; providing consumer product information services provided via customer support services and help desk services regarding the selection and purchase of building and construction materials; business consulting services for contractors and builders, namely, one-on-one business support services provided via telephone or online; providing consumer product information via the internet to customers regarding selection, purchase and installation of building and construction products; business support services in the nature of business operation consulting services related to building and construction products and services; providing business information to businesses within a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising services for member businesses on distribution lists, websites and social media; providing business consulting services to professionals in the building and construction industry relating to color analysis, color coordination and color selection for paints and for building and construction products; promoting the goods and services of others by means of a preferred customer program that provides customers with benefits and warranties for the purchase of building and construction products; home warranty services, namely, arranging for repairs and replacement of home building products and home exteriors provided by others pursuant to service agreements

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 037:
Current identification: Building construction, remodeling and repair; construction planning services; installation services for wallboards, siding, roofing, and walls; consultation in the field of construction, maintenance and renovation of real property; consultation in the field of installation, maintenance, and repair of wallboards, siding, roofing, and walls; maintenance and renovation of real property; providing an internet website that features information on building construction, construction planning, and building renovation; building construction information provided online; providing construction information to member businesses in a membership club, namely, regarding installation best practices for home and commercial contracting and construction services; customer support services for dealers, distributors, builders and other trade professionals for answering questions related to product information, product installation, and providing installation guidance and support services in the field of building and construction, all being technical advice related to the installation and repair of building and construction products; customer support services for dealers, distributors, builders and other trade professionals in the nature of providing information in the field of installation of building and construction products; technical customer support services in the nature of help desk services, namely, providing technical advice related to the installation of building and construction products; customer support services and help desk services, namely, providing information about the installation of building construction products; providing information to customers regarding the installation of building and construction products; technical support services, namely, troubleshooting and technical consultation related to the installation of building and construction products

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 042:
Current identification: Platform as a service (PAAS) featuring computer software platforms for users to manage products and online purchases for their customers, to compare costs, to prepare budgets and to prepare cost reports; platform as a service (PAAS) services featuring computer software platforms for users to access information about fiber cement products, to create cost estimates for product purchases, to manage online product sales on a project-by-project basis, to manage inventory of goods on a project-by-project basis, and to provide users with software for billing purposes; software as a service (SAAS) services featuring software for creating 3D images, artwork and designs; software as a service (SAAS) services featuring software that connects customers to product distributors; software as a service (SAAS) services featuring software that allows users to track product purchases and to calculate cost estimates for product purchases; architectural design, interior design, exterior home design, and exterior color design advisory and consultancy services, namely, color analysis for the purpose of interior and exterior design, providing a means of color coordinating building and construction materials, and providing color analysis for the design of cladding, siding, trim, panels and boards for building and construction, all of the aforementioned services not for landscape or gardening; providing an online interactive website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives; providing a website featuring information in the field of home and building architectural design, interior design, exterior architectural design, and architecture; providing a website featuring technology that enables users to place and track orders for builders, contractors and construction sales professionals; providing an online website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, to access instructional videos and materials in the fields of building and construction, and contact customer service representatives; software as a service (SAAS) featuring software for managing and calculating construction takeoff; software as a service (SAAS) featuring software for quantifying the volume of construction materials required from construction project measurements and from blueprints; software as a service (SAAS) featuring software for the construction industry for preparing bids; software as a service (SAAS) services featuring software for construction project management; software as a service (SAAS) services featuring software for providing digital estimations of measurements from blueprints; software as a service (SAAS) services featuring software for creating digital plans and allowing users to view and share digital plans; providing a website featuring interior design information on colors, paints, color analysis, color coordination, and color selection

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


This is the first extension request.

Correspondence Information (current):
      Charlene A. Azema
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Correspondence Information (proposed):
      Charlene A. Azema
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED


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).





A fee payment in the amount of $1125 will be submitted with the form, representing payment for 9 classes.


Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization under Section 1(b) in the notice of allowance or as subsequently modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and 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.

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 resulting registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.


Signature: /lesley y. kim/      Date Signed: 06/17/2021
Signatory's Name: Lesley Y. Kim
Signatory's Position: Associate Attorney, Knobbe Martens Olson & Bear, LLP, California Bar Member
Signatory's Phone: 949-760-0404
Signature method: Sent to third party for signature

PAYMENT: 88786425
PAYMENT DATE: 06/17/2021

Serial Number: 88786425
Internet Transmission Date: Thu Jun 17 21:23:37 ET 2021
TEAS Stamp: USPTO/ESU-XXX.XXX.XX.XXX-202106172123375
70985-88786425-780a3dd1cd382f9e47e125d19
7f6cdf2ecba08d302fe8eab7e74e9aee01fa6d4-
CC-23344538-20210617192346791983