Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90030659 VIM(Standard Characters, see http://uspto.report/TM/90030659/mark.png) 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 software for use in the building design, building engineering, real estate development, architecture, and construction industries, namely, for purposes of computer assisted design, graphics, modeling, and planning of buildings, commercial, industrial, and residential development projects, construction project design management, building maintenance and repairs, and for use by first responder and emergency personnel to access and provide services to buildings; Software as a service (SAAS) services featuring software, namely, computer aided drafting applications for graphics and building engineering and design; Software as a service (SAAS) services featuring software for developing, collecting, editing, organizing, storing, and sharing building modeling information; Software as a service (SAAS) services featuring software for creating visualizations of multi-dimensional designs in the fields of building engineering, building design, and architecture; Software as a service (SAAS) services for use in project management for use in the fields of building engineering and building design and architecture; Software as a service (SAAS) services featuring software for determining the costs of construction products and projects, construction labor costs, and the replacement costs of buildings and building materials, equipment and fixtures
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2019 and first used in commerce at least as early as 11/07/2019 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Software as a service (SAAS) services featuring software for use in the building design, building engineering, real estate development, architecture, and construction industries, namely, for purposes of computer assisted design, graphics, modeling, and planning of buildings, commercial, industrial, and residential development projects, construction project design management, building maintenance and repairs, and for use by first responder and emergency personnel to access and provide services to buildings; Software as a service (SAAS) services featuring software for use in creating building designs, creating building engineering plans, creating building plans for real estate development, creating architecture designs with use in computer assisted design, graphics, modeling, and planning of buildings, commercial, industrial, and residential development projects, construction project design management, building maintenance and repairs, and for use by first responder and emergency personnel to access and provide services to buildings by those in the construction industries; Software as a service (SAAS) services featuring software, namely, computer aided drafting applications for graphics and building engineering and design; Software as a service (SAAS) services featuring software, namely, computer aided drafting applications for creating graphics and building engineering and design; Software as a service (SAAS) services featuring software for developing, collecting, editing, organizing, storing, and sharing building modeling information; Software as a service (SAAS) services featuring software for creating visualizations of multi-dimensional designs in the fields of building engineering, building design, and architecture; Software as a service (SAAS) services for use in project management for use in the fields of building engineering and building design and architecture; Software as a service (SAAS) services for enabling project management for use in the fields of building engineering and building design and architecture; Software as a service (SAAS) services featuring software for determining the costs of construction products and projects, construction labor costs, and the replacement costs of buildings and building materials, equipment and fixturesClass 042 for Software as a service (SAAS) services featuring software for use in creating building designs, creating building engineering plans, creating building plans for real estate development, creating architecture designs with use in computer assisted design, graphics, modeling, and planning of buildings, commercial, industrial, and residential development projects, construction project design management, building maintenance and repairs, and for use by first responder and emergency personnel to access and provide services to buildings by those in the construction industries; Software as a service (SAAS) services featuring software, namely, computer aided drafting applications for creating graphics and building engineering and design; Software as a service (SAAS) services featuring software for developing, collecting, editing, organizing, storing, and sharing building modeling information; Software as a service (SAAS) services featuring software for creating visualizations of multi-dimensional designs in the fields of building engineering, building design, and architecture; Software as a service (SAAS) services for enabling project management for use in the fields of building engineering and building design and architecture; Software as a service (SAAS) services featuring software for determining the costs of construction products and projects, construction labor costs, and the replacement costs of buildings and building materials, equipment and fixtures
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2019 and first used in commerce at least as early as 11/07/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of Screen grabs of Applicant's software.
"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:
SPU0-2096416170-202104141 82215805652_._02016227.PDF
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      W. SCOTT CREASMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: screasman@taylorenglish.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rbowie@taylorenglish.com; trademarkdocketing@taylorenglish.com

The docket/reference number is 72671-3010.
Correspondence Information (proposed):
      W. Scott Creasman
      PRIMARY EMAIL FOR CORRESPONDENCE: screasman@taylorenglish.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rbowie@taylorenglish.com; trademarkdocketing@taylorenglish.com

The docket/reference number is 72671-3010.

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)
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: /wsc/      Date: 04/14/2021
Signatory's Name: William Scott Creasman
Signatory's Position: Attorney of record, Georgia bar member
Signatory's Phone Number: 770-434-6868

Signature method: Sent to third party for signature

Response Signature
Signature: /wsc/     Date: 04/14/2021
Signatory's Name: William Scott Creasman
Signatory's Position: Attorney of record, Georgia bar member

Signatory's Phone Number: 770 434 6868 Signature method: Sent to third party for signature

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:    W. SCOTT CREASMAN
   TAYLOR ENGLISH DUMA LLP
   
   1600 PARKWOOD CIRCLE, SUITE 200
   ATLANTA, Georgia 30339
Mailing Address:    W. Scott Creasman
   TAYLOR ENGLISH DUMA LLP
   1600 PARKWOOD CIRCLE, SUITE 200
   ATLANTA, Georgia 30339
        
Serial Number: 90030659
Internet Transmission Date: Wed Apr 14 18:40:16 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2021041418401667
6993-90030659-77059696f29e6d8f5c8259041c
43a26c5e9fc73a2b3bbbaf747152ccdc251c240-
N/A-N/A-20210414182215805652