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. 90121555 XYLEM(Standard Characters, see http://uspto.report/TM/90121555/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 044 for Vegetation clearance and excavation services, namely, clearance and excavation of utility lines and rights-of-way; arborist services; vegetation management services, namely, tree trimming, brush and tree removal and vegetation spraying; lawn mowing services, all using specialized machines and equipment, computer software, drones, helicopters and/or aerial devices
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2011 and first used in commerce at least as early as 01/01/2011 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Vegetation clearance and excavation services, namely, clearance and excavation of utility lines and rights-of-way; Vegetation clearance services, namely, vegetation removal services for utility lines and rights-of-way; arborist services; arborist services, namely tree care services; vegetation management services, namely, tree trimming, brush and tree removal and vegetation spraying; vegetation management services, namely, tree trimming, brush and tree removal and insecticde spraying for horticulture; lawn mowing services, all using specialized machines and equipment, computer software, drones, helicopters and/or aerial devicesClass 044 for Vegetation clearance services, namely, vegetation removal services for utility lines and rights-of-way; arborist services, namely tree care services; vegetation management services, namely, tree trimming, brush and tree removal and insecticde spraying for horticulture; lawn mowing services, all using specialized machines and equipment, computer software, drones, helicopters and/or aerial devices
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2011 and first used in commerce at least as early as 01/01/2011 , and is now in use in such commerce.

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

Applicant hereby adds the following class of goods/services to the application:
New: Class 037 for Excavation services, namely, excavation for utility lines and rights-of-way
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2011 and first used in commerce at least as early as 01/01/2011 , and is now in use in such commerce.


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      JANE TUCKER
      PRIMARY EMAIL FOR CORRESPONDENCE: jtucker@vanblacklaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 036537-9.
Correspondence Information (proposed):
      Jane Tucker
      PRIMARY EMAIL FOR CORRESPONDENCE: jtucker@vanblacklaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 036537-9.

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).

FEE(S)
Fee(s) in the amount of $350 is being submitted.

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: /Randolph D. Hoover/      Date: 03/01/2021
Signatory's Name: Randolph D. Hoover
Signatory's Position: President
Signatory's Phone Number: 757-353-1430

Signature method: Sent to third party for signature

Response Signature
Signature: /Jane D. Tucker/     Date: 03/01/2021
Signatory's Name: Jane D. Tucker
Signatory's Position: Attorney of Record, Virginia Bar member

Signatory's Phone Number: 757-446-8625 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:    JANE TUCKER
   VANDEVENTER BLACK LLP
   
   101 W. MAIN STREET, SUITE 500
   NORFOLK, Virginia 23510
Mailing Address:    Jane Tucker
   VANDEVENTER BLACK LLP
   101 W. MAIN STREET, SUITE 500
   NORFOLK, Virginia 23510
        
PAYMENT: 90121555
PAYMENT DATE: 03/01/2021
        
Serial Number: 90121555
Internet Transmission Date: Mon Mar 01 16:35:03 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXX:XXXX:XXXX:X
XXX:XXXX-20210301163503176174-90121555-7
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