Application

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 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

---

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 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

Serial Number: 90067815

Filing Date: 07/22/2020

To the Commissioner for Trademarks:

MARK: ICC EVALUATION SERVICE (Standard Characters, see mark)
The literal element of the mark consists of ICC EVALUATION SERVICE. The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, ICC Evaluation Service, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      3060 Saturn Street, Suite 100
      Brea, California 92821-1732
      United States
      XXXX

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 042:  Analysis, testing, evaluation and verification of products, components, materials, services, methods, and quality-control procedures of others to determine conformity with certification standards; analysis, testing, evaluation and verification of products, components, materials, services, methods, and quality-control procedures of others for compliance with codes, standards and guidelines related to the construction of buildings.

In International Class 042, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 02/00/2003, and first used in commerce at least as early as 02/00/2003, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) Screen shot from Applicant's website that displays the mark in connection with the identified services.

Original PDF file:
SPE0-20519620614-20200722 091814038628_._ICC_EVALUT ION_SERVICE_Class_42_Spec imen_1.jpg.pdf
Converted PDF file(s) (1 page)
Specimen File1

International Class 045:  Reviewing codes, standards, guidelines and practices to assure compliance with building and construction laws and regulations

In International Class 045, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 02/00/2003, and first used in commerce at least as early as 02/00/2003, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) Brochure and screen shots from Applicant's website that display the mark in connection with the identified services..
JPG file(s):
Specimen File1
Original PDF file:
SPE0-20519620614-20200722 091814038628_._ES-Reports _vs_LabReports.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPE0-1-20519620614-202007 22091814038628_._ICC_EVAL UATION_Class_45.pdf
Converted PDF file(s) (1 page)
Specimen File1


Disclaimer
No claim is made to the exclusive right to use "EVALUATION SERVICE" apart from the mark as shown.

Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3699878, 3921917, 6070575, and others.


The owner's/holder's proposed attorney information: David O. Johanson, Esq.. Other appointed attorneys are the firm of Morgan, Lewis & Bockius LLP, RON N. DREBEN, KAREN A. BUTCHER, ANITA B. POLOTT, CAROLE R. KLEIN, JOSEPH E. WASHINGTON, KRISTIN H. ALTOFF, DANA S. GROSS, JANE W. WISE, SETH A. RAPPAPORT, CONSTANCE BOUTSIKARIS, REBECCA E. MCDOUGALL, BRITTANY A. ESTELL, RACHEL FERTIG and KIRAN JASSAL, all located at 1111 Pennsylvania Ave., NW, Washington, D.C. 20004, ROCHELLE D. ALPERT, CARLA B. OAKLEY, SHARON R. SMITH, JENNA STOKES, GENE K. PARK and PETER G. BYRNE, members of the California Bar, all located at One Market, Spear Street Tower, San Francisco, California 94105, ANDREW J. GRAY IV, member of the California Bar, located at 1400 Page Mill Road, Palo Alto, California 94304, and RACHELLE A. DUBOW, DAVID O. JOHANSON and AMELIA G. PENNINGTON, members of the Massachusetts Bar, all located at One Federal Street, Boston, Massachusetts 02110, all of whom should receive correspondence and documents related to this application through the offices of Morgan, Lewis & Bockius LLP. David O. Johanson, Esq. of Morgan, Lewis & Bockius LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
      One Federal Street
      Boston, Massachusetts 02110
      United States
      617-951-8304(phone)
      617.341.7701(fax)
      trademarks@morganlewis.com
The docket/reference number is 107507-0059.
David O. Johanson, Esq. submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.

The applicant's current Correspondence Information:

David O. Johanson, Esq.

PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@morganlewis.com        SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): david.johanson@morganlewis.com; peter.byrne@morganlewis.com; jennifer.kagan@morganlewis.com Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

A fee payment in the amount of $550 has been submitted with the application, representing payment for 2 class(es).

Declaration

	Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a): The signatory believes that the applicant is the owner of the trademark/service 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 on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application and was used on or in connection with the goods/services in the application as of the application filing date; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. And/Or If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e): The signatory believes that the applicant is entitled to use the mark in commerce; 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 on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
	To the best of the signatory's knowledge and belief, no other persons, except, if applicable, 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 of such other persons, to cause confusion or mistake, or to deceive.
	To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
	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 all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Shahin Moinian/   Date: 07/22/2020
Signatory's Name: Shahin Moinian
Signatory's Position: President
Payment Sale Number: 90067815
Payment Accounting Date: 07/22/2020

Serial Number: 90067815
Internet Transmission Date: Wed Jul 22 18:08:47 ET 2020
TEAS Stamp: USPTO/BAS-XXX.XXX.XXX.XX-202007221808479
22801-90067815-7404fbf409dd3e9ef4045aabe
e293cc80a7f11bc73d28cb9fe3f8d8563557e8a8
3a-DA-08474798-20200722110019935934