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. 90089392 HMI INNOVATORS IN GLASS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9008939 2/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Art installations

Applicant hereby deletes the following class of goods/services from the application.
Class 020 for Tabletops; bathroom mirrors; decorative mirrors; booth dividers; semi-transparent mirrors; bathroom stalls; conference room tables and vestibules; sneeze guards; shelving; room dividers

Applicant proposes to amend the following:

Current:
Class 006 for Door hinges, hardware, and accessories; metal staircases; pool fencing; metal awnings; metal railings; building wall framing made primarily of metal; metal window frames; metal door frames
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: Door hinges, hardware, and accessories; Door hinges of metal, metal hardware in the nature of pulls and clips; metal staircases; pool fencing; metal awnings; metal railings; building wall framing made primarily of metal; metal window frames; metal door framesClass 006 for Door hinges of metal, metal hardware in the nature of pulls and clips; metal staircases; metal awnings; metal railings; building wall framing made primarily of metal; metal window frames; metal door frames
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 007 for Elevator cabs; mechanical railings; moving staircases
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: Elevator cabs; Structural parts of elevators, namely, elevator cabs; mechanical railings; moving staircasesClass 007 for Structural parts of elevators, namely, elevator cabs; moving staircases
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 011 for Shower enclosures; cook tops
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: Shower enclosures; cook tops; cooktops, namely, electric cooktopsClass 011 for Shower enclosures; cooktops, namely, electric cooktops
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 019 for Backsplash made of glass; staircases, not of metal; stair treads not of metal; non-metal railings for stairs; non-metal railings for escalators; non-metal railings for balconies; building glass for sport court surrounds and enclosures; glass for building; glass bar tops and bar backs; digitally printed glass for building; Laminated flat glass for building; insulated glass
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: Backsplash made of glass; Backsplash made of glass in the nature of glass tiles; staircases, not of metal; stair treads not of metal; non-metal railings for stairs; non-metal railings for escalators; non-metal railings for balconies; building glass for sport court surrounds and enclosures; non-metal guard rails; building glass for athletic handball, squash and racquetball court surrounds and enclosures; glass bar tops and bar backs; glass for building; glass bar backs in the nature of tiles of glass; digitally printed glass for building; laminated flat glass for building; insulated glass; pool fencing in the nature of non-metal fences; bathroom stalls in the nature of portable non-metal structures to provide temporary privacy for toilet purposes and construction materials in the nature of nonmetal toilet partitionsClass 019 for Backsplash made of glass in the nature of glass tiles; staircases, not of metal; stair treads not of metal; non-metal railings for stairs; non-metal railings for escalators; non-metal railings for balconies; non-metal guard rails; building glass for athletic handball, squash and racquetball court surrounds and enclosures; glass for building; glass bar backs in the nature of tiles of glass; digitally printed glass for building; laminated flat glass for building; insulated glass; pool fencing in the nature of non-metal fences; bathroom stalls in the nature of portable non-metal structures to provide temporary privacy for toilet purposes and construction materials in the nature of nonmetal toilet partitions
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 021 for Unworked or semi-worked glass for use in the manufacture of showers, windows, doors, and solar panels; digitally printed glass, not for building; Laminated flat glass, not for building
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: Unworked or semi-worked glass for use in the manufacture of showers, windows, doors, and solar panels; digitally printed glass, not for building; digitally printed semi-worked glass, not for building; laminated flat glass, not for building; art installations in the nature of sculptures and wall hangings made of glass; towel bars made of glassClass 021 for Unworked or semi-worked glass for use in the manufacture of showers, windows, doors, and solar panels; digitally printed semi-worked glass, not for building; laminated flat glass, not for building; art installations in the nature of sculptures and wall hangings made of glass; towel bars made of glass
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 027 for Glass wall coverings
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: Glass wall coverings; Non-textile wall coverings in the nature of glass wall coveringsClass 027 for Non-textile wall coverings in the nature of glass wall coverings
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Hoskin & Muir, Inc., a corporation of California, having an address of
      4795 Shepherdsville Rd.
      Louisville, Kentucky 40218
      United States
      Email Address: XXXX

Proposed: Hoskin & Muir, Inc., a corporation of California, having an address of
      4795 Shepherdsville Rd.
      Louisville, Kentucky 40218
      United States
      Email Address: XXXX
Correspondence Information (current):
      MICHELE M. GLESSNER
      PRIMARY EMAIL FOR CORRESPONDENCE: michele.glessner@alston.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): elaine.hunt@alston.com; ipclt@alston.com

The docket/reference number is 70023/551344.
Correspondence Information (proposed):
      Michele M. Glessner
      PRIMARY EMAIL FOR CORRESPONDENCE: michele.glessner@alston.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): elaine.hunt@alston.com; ipclt@alston.com; lauren.timmons@alston.com

The docket/reference number is 70023/551344.

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: /Lauren Timmons/     Date: 01/29/2021
Signatory's Name: Lauren R. Timmons
Signatory's Position: Attorney of Record, North Carolina Bar member

Signatory's Phone Number: 704-444-1115 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:    MICHELE M. GLESSNER
   ALSTON & BIRD LLP
   
   101 SOUTH TRYON STREET, SUITE 4000
   CHARLOTTE, North Carolina 28280-4000
Mailing Address:    Michele M. Glessner
   ALSTON & BIRD LLP
   101 SOUTH TRYON STREET, SUITE 4000
   CHARLOTTE, North Carolina 28280-4000
        
Serial Number: 90089392
Internet Transmission Date: Fri Jan 29 07:51:05 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021012907510523
2283-90089392-760c63a6083ece61ed1cdf3534
e26ef7f79377bd6d9fe2752ffa386f7020362d2-
N/A-N/A-20210129074410973326