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. 90165474 PS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9016547 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 037 for Building and infrastructure demolition; building and infrastructure renovation; building and infrastructure restoration; building and infrastructure remediation; construction of buildings; site remediation
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: Building and infrastructure demolition; Building and infrastructure demolition, namely, house and building demolition; building and infrastructure renovation; building and infrastructure restoration; building and infrastructure remediation; construction of buildings; Providing a website featuring information about ecofriendly building and infrastructure restoration conversion efforts; site remediationClass 037 for Building and infrastructure demolition, namely, house and building demolition; building and infrastructure renovation; building and infrastructure restoration; construction of buildings; Providing a website featuring information about ecofriendly building and infrastructure restoration conversion efforts
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 042 for Providing a website featuring information about eco-friendly building and infrastructure remediation and restoration conversion efforts, green architecture, interior design, eco-friendly community planning and infrastructure development
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: Providing a website featuring information about eco-friendly building and infrastructure remediation and restoration conversion efforts, green architecture, interior design, eco-friendly community planning and infrastructure development; Providing a website featuring information about green architecture, interior design, eco-friendly community planning and infrastructure developmentClass 042 for Providing a website featuring information about green architecture, interior design, eco-friendly community planning and infrastructure development
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 hereby adds the following class of goods/services to the application:
New: Class 040 for Infrastructure demolition not for buildings, namely, demolition of steelmaking, oil refinery and power generation equipment; building and infrastructure remediation, namely, environmental treatment of soil, waste and/or water; mold remediation; site remediation, namely, environmental treatment of soil, waste and/or water; mold remediation; Providing a website featuring information about ecofriendly environmental building and infrastructure remediation including the environmental treatment of soil, waste and/or water and mold remediation
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


ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized letters "P" and "S" on a shaded rectangle.

Significance of wording, letter(s), or numeral(s)
PS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


The owner's/holder's current attorney information: Michael Vincent Solomita. Michael Vincent Solomita of NORTON ROSE FULBRIGHT US LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      98 SAN JACINTO BOULEVARD, SUITE 1100
      AUSTIN, Texas 78701
      United States
The docket/reference number is STRE.T0004US.
      The phone number is 512-474-5201.
      The fax number is 512-536-4598.
      The email address is aoipdocket@nortonrosefulbright.com

The owner's/holder's proposed attorney information: Michael Vincent Solomita. Other appointed attorneys are Timothy M. Kenny, Stephanie A. Schmidt and any other attorneys with the law firm. Michael Vincent Solomita of NORTON ROSE FULBRIGHT US 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

      98 SAN JACINTO BOULEVARD, SUITE 1100
      AUSTIN, Texas 78701
      United States
The docket/reference number is STRE.T0004US.
      The phone number is 512-474-5201.
      The fax number is 512-536-4598.
      The email address is aoipdocket@nortonrosefulbright.com

Michael Vincent Solomita 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.Correspondence Information (current):
      MICHAEL VINCENT SOLOMITA
      PRIMARY EMAIL FOR CORRESPONDENCE: aoipdocket@nortonrosefulbright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): chandler.stephens@nortonrosefulbright.com; andrea.shannon@nortonrosefulbright.com; david.wade@nortonrosefulbright.com; michael.solomita@nortonrosefulbright.com

The docket/reference number is STRE.T0004US.
Correspondence Information (proposed):
      Michael Vincent Solomita
      PRIMARY EMAIL FOR CORRESPONDENCE: aoipdocket@nortonrosefulbright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): andrea.shannon@nortonrosefulbright.com; david.wade@nortonrosefulbright.com; michael.solomita@nortonrosefulbright.com

The docket/reference number is STRE.T0004US.

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: /Andrea Shannon/      Date: 07/23/2021
Signatory's Name: Andrea Shannon
Signatory's Position: Attorney of record, Texas bar member
Signatory's Phone Number: 512-474-5201

Signature method: Sent to third party for signature

Response Signature
Signature: /Andrea Shannon/     Date: 07/23/2021
Signatory's Name: Andrea Shannon
Signatory's Position: Attorney of record, Texas Bar member

Signatory's Phone Number: 713-651-5233 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:    MICHAEL VINCENT SOLOMITA
   NORTON ROSE FULBRIGHT US LLP
   
   98 SAN JACINTO BOULEVARD, SUITE 1100
   AUSTIN, Texas 78701
Mailing Address:    Michael Vincent Solomita
   NORTON ROSE FULBRIGHT US LLP
   98 SAN JACINTO BOULEVARD, SUITE 1100
   AUSTIN, Texas 78701
        
PAYMENT: 90165474
PAYMENT DATE: 07/23/2021
        
Serial Number: 90165474
Internet Transmission Date: Fri Jul 23 17:47:35 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021072317473506
7180-90165474-780d17ec19e7031205477548c8
6bfebfe38e693da72c57d2f86964af289767c-CC
-47312899-20210722174930755698