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 11/30/2023)

---

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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88894988 EI (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8889498 8/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for Software as a service (SAAS) services featuring mobile device software applications and web-based software applications to track and publish construction site code and regulation compliance and environmental regulation compliance; software as a service (SAAS) services featuring software to generate and publish reports and assessments in the field of construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; providing a web-based system and on-line portal to automate construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; Software as a service (SAAS) services featuring mobile device software applications and web-based software application to track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resources, improve efficiency, resource utilization and reduce waste and reduce emissions on construction sites and construction projects and enable communication and improve productivity among contractors and construction project team members; maintaining on-line database systems for others that track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resource
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: Software as a service (SAAS) services featuring mobile device software applications and web-based software applications to track and publish construction site code and regulation compliance and environmental regulation compliance; software as a service (SAAS) services featuring software to generate and publish reports and assessments in the field of construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; providing a web-based system and on-line portal to automate construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; providing a web-based system and on-line portal featuring on-line non-downloadable software that enables users to automate construction site code and regulation compliance and environmental regulation compliance information and to facilitate communication and improve productivity among contractors and construction project team members; Software as a service (SAAS) services featuring mobile device software applications and web-based software application to track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resources, improve efficiency, resource utilization and reduce waste and reduce emissions on construction sites and construction projects and enable communication and improve productivity among contractors and construction project team members; maintaining on-line database systems for others that track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resourceClass 042 for Software as a service (SAAS) services featuring mobile device software applications and web-based software applications to track and publish construction site code and regulation compliance and environmental regulation compliance; software as a service (SAAS) services featuring software to generate and publish reports and assessments in the field of construction site code and regulation compliance and environmental regulation compliance and enable communication and improve productivity among contractors and construction project team members; providing a web-based system and on-line portal featuring on-line non-downloadable software that enables users to automate construction site code and regulation compliance and environmental regulation compliance information and to facilitate communication and improve productivity among contractors and construction project team members; Software as a service (SAAS) services featuring mobile device software applications and web-based software application to track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resources, improve efficiency, resource utilization and reduce waste and reduce emissions on construction sites and construction projects and enable communication and improve productivity among contractors and construction project team members; maintaining on-line database systems for others that track the location, quantity and availability of construction materials, building raw materials, construction equipment and construction site resource
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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
The letters "EI" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.

Correspondence Information (current):
      DANIEL E. KATTMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@reinhartlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 14695.
Correspondence Information (proposed):
      Daniel E. Kattman
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@reinhartlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 14695.

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).

SIGNATURE(S)
Response Signature
Signature: /Heidi R. Thole/     Date: 12/05/2020
Signatory's Name: Heidi R. Thole
Signatory's Position: Associate Attorney, Reinhart Boerner Van Deuren, Wisconsin Bar Member

Signatory's Phone Number: 414-298-8351

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:    DANIEL E. KATTMAN
   REINHART BOERNER VAN DEUREN S.C.
   
   1000 N. WATER STREET
   MILWAUKEE, Wisconsin 53202
Mailing Address:    Daniel E. Kattman
   REINHART BOERNER VAN DEUREN S.C.
   1000 N. WATER STREET
   MILWAUKEE, Wisconsin 53202
        
Serial Number: 88894988
Internet Transmission Date: Sat Dec 05 16:15:41 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20201205161541166
193-88894988-7505f41b6b61780de355d696a27
c7f946b2185ef28dfc1dd5db23f4be5428f4-N/A
-N/A-20201205161038765078