TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88977136 REED'S CROSSING (Stylized and/or with Design, see http://uspto.report/TM/88977136/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 037 for Real estate development; master plan community services, namely, planning, developing and construction of master plan communities; land development services, namely, planning and laying out of residential communities; providing websites featuring information in the field of real estate development, namely, planned communities and residential developments
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.

In International Class 037, the mark was first used at least as early as 07/12/2018 and first used in commerce at least as early as 07/12/2018.

Proposed: Class 037 for Real estate development; master plan community services, namely, planning, developing and construction of master plan communities; land development services, namely, planning and laying out of residential communities; providing websites featuring information in the field of real estate development, namely, planned communities and residential developments
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.

In International Class 037, the mark was first used at least as early as 07/12/2018 . and first used in commerce at least as early as 07/12/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 037. The specimen(s) submitted consists of download of screenshots from Applicant website which evidence use of mark used in connection with services of this 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].
Original PDF file:
SPU0-7219222557-20200615114522290216_._REED_S_CROSSING_Substitute_Specimen.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Correspondence Information (current):
      Julia Anne Matheson
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@potomaclaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jmatheson@potomaclaw.com
Correspondence Information (proposed):
      Julia Anne Matheson
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@potomaclaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jmatheson@potomaclaw.com

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).

ADDITIONAL STATEMENTS
Miscellaneous Statement
In the final Office Action of May 28, 2020, the Examining Attorney noted that the substitute specimens of use submitted through Applicant's prior Response to Office Action did not contain Applicant's URL and date of access but were otherwise acceptable as evidence of use. Through this Response, Applicant submits the specimens of use with both the URL and date of capture for all screenshots submitted. It is therefore respectfully requested that the substitute specimens of use be accepted, and the application be accepted for registration.


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: /Dolores A Valle/      Date: 06/15/2020
Signatory's Name: Dolores A Valle
Signatory's Position: Corporate Secretary
Signatory's Phone Number: 202-251-6920 (Applicant's Attorney of Record)


Request for Reconsideration Signature
Signature: /Julia Anne Matheson/     Date: 06/15/2020
Signatory's Name: Julia Anne Matheson
Signatory's Position: DC attorney, Attorney of record

Signatory's Phone Number: 202-251-6920

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Julia Anne Matheson
   Potomac Law Group, PLLC
   Suite 700
   1300 Pennsylvania Avenue, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Julia Anne Matheson
   Potomac Law Group, PLLC
   Suite 700
   1300 Pennsylvania Avenue, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88977136
Internet Transmission Date: Mon Jun 15 14:33:19 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2020061514331929
6561-88977136-71081e4356fc956b46e918ec7c
1ccf52f6d1295069fe27e385f49ada6b49ad73e9
-N/A-N/A-20200615114522290216