United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
EXAMINER’S AMENDMENT
Issue date: September 24,
2020
Application has been amended as shown below. As agreed to by Charlene A. Azema on
September 24, 2020, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections.
TMEP §707. Otherwise, no response is required. Id.
In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or
broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods is amended to read as follows: “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” in International Class 002. See TMEP §§1402.01, 1402.01(e).
The identification of services is amended to read as follows:
“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” in International Class 035. See TMEP §§1402.01, 1402.01(e).
The identification of services is amended to read as follows: “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” in International Class
037. See TMEP §§1402.01, 1402.01(e).
The identification of services is amended to read as follows:
“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” in International Class 042.
See TMEP §§1402.01, 1402.01(e).
The refusals and/or requirements set forth in the Office action dated March 17, 2020, have been overcome and/or addressed
and all issues have been resolved.
If applicant has any questions about this examiner’s amendment, please contact the undersigned examining attorney.
/Alison F. Pollack/
Alison F. Pollack
Trademark Examining Attorney
Law Office 106
571-272-4592
alison.pollack@uspto.gov