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 09/30/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90026456 STRATUS(Standard Characters, see http://uspto.report/TM/90026456/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Design and production of interior and exterior signage for advertising, promotional, or marketing purposes
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: Design and production of interior and exterior signage for advertising, promotional, or marketing purposes; Design and production of advertising content for interior and exterior signage for advertising, promotional, or marketing purposesClass 035 for Design and production of advertising content for interior and exterior signage for advertising, promotional, or marketing purposes
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.

Applicant proposes to amend the following:

Current:
Class 037 for Sign repair and maintenance; installation of advertising, promotional, or marketing signage; interior and exterior lighting apparatus installation; repair and maintenance of electric lighting apparatus; technical consultation in the field of installation of lighting apparatus, lighting instruments and lighting systems; sign and lighting installation project management; interior and exterior electrical services, namely, repairs, maintenance, and installation of electrical wiring, light fixtures, and electrical panels; retail refresh and remodel construction services
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: Sign repair and maintenance; installation of advertising, promotional, or marketing signage; interior and exterior lighting apparatus installation; repair and maintenance of electric lighting apparatus; technical consultation in the field of installation of lighting apparatus, lighting instruments and lighting systems; sign and lighting installation project management; interior and exterior electrical services, namely, repairs, maintenance, and installation of electrical wiring, light fixtures, and electrical panels; retail refresh and remodel construction services; retail refresh and remodel construction services, namely, interior and exterior refurbishment of buildings, commercial physical locations, and their propertyClass 037 for Sign repair and maintenance; installation of advertising, promotional, or marketing signage; interior and exterior lighting apparatus installation; repair and maintenance of electric lighting apparatus; technical consultation in the field of installation of lighting apparatus, lighting instruments and lighting systems; sign and lighting installation project management; interior and exterior electrical services, namely, repairs, maintenance, and installation of electrical wiring, light fixtures, and electrical panels; retail refresh and remodel construction services, namely, interior and exterior refurbishment of buildings, commercial physical locations, and their property
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.

Applicant proposes to amend the following:

Current:
Class 040 for Fabrication of interior and exterior sign systems to the order and specification of others
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: Fabrication of interior and exterior sign systems to the order and specification of others; Custom fabrication of interior and exterior sign systems to the order and specification of othersClass 040 for Custom fabrication of interior and exterior sign systems to the order and specification of others
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.
Correspondence Information (current):
      JAMES E. ROSINI
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketny@huntonak.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 123182/5.
Correspondence Information (proposed):
      James E. Rosini
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketny@huntonak.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 123182/5.

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: /JER/     Date: 10/14/2020
Signatory's Name: James E. Rosini
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 212-309-1000

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:    JAMES E. ROSINI
   HUNTON ANDREWS KURTH LLP
   
   200 PARK AVENUE
   NEW YORK, New York 10166
Mailing Address:    James E. Rosini
   HUNTON ANDREWS KURTH LLP
   200 PARK AVENUE
   NEW YORK, New York 10166
        
Serial Number: 90026456
Internet Transmission Date: Wed Oct 14 10:01:26 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2020101410012624
2436-90026456-7503d27ae8ae9a163138d5199d
1d491a735607bb12d1b77ff8d15d172c9cbad-N/
A-N/A-20201014095342281996