Application

PTO- 1478

Approved for use through 02/28/2021. OMB 0651-0009

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- 1478

Approved for use through 02/28/2021. OMB 0651-0009

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

Trademark/Service Mark Application, Principal Register

Serial Number: 90518558

Filing Date: 02/08/2021

To the Commissioner for Trademarks:

MARK: ICC DIGITAL CODES (Standard Characters, see mark)
The literal element of the mark consists of ICC DIGITAL CODES. The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, International Code Council, Inc., a corporation 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 009:  Computer software and downloadable computer software for use in the creation of and to facilitate searching of electronic versions of international, federal, state and local building design and construction codes, standards, regulations and rules, identifying and accessing said codes, standards, regulations and rules applicable in a particular jurisdiction and across jurisdictions, checking compliance of buildings or other structures or environments with such codes, standards, regulations and rules, and identifying areas of non-compliance; computer software and downloadable computer software for use by government agencies and officials, architects, engineers, consultants and others in monitoring compliance with codes, standards, regulations and rules; downloadable electronic publications, namely, books, e-books and manuals in the field of building, construction and safety codes, standards, regulations and rules; downloadable electronic publications, namely, books, e-books and manuals in the field of environmentally sound building, construction and safety codes, standards, regulations and rules; downloadable mobile application for accessing, purchasing and reading books, e-books and manuals in the field of building, construction and safety codes, standards, regulations and rules, CD-ROMs and DVDs containing building construction and safety codes, standards, rules and regulations, commentary related to said codes, standards, rules and regulations, and training in compliance with said codes, standards, rules and regulations.
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 035:  Computerized on-line ordering services featuring products relating to construction codes, standards, regulations and rules in the nature of monographs, series of books, manuals, materials in the nature of written articles and written informational materials compiled in loose-leaf and bound volume format, computer software, CD-ROMs and DVDs directed to government officials, architects, engineers and others concerned with construction codes, standards, regulations and rules.
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 037:  Providing an on-line searchable database in the fields of building construction, maintenance and repair for searching and retrieving information from recommended building, construction, and safety codes, standards, regulations and rules for use in the fields of building construction, maintenance and repair.
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 042:  Providing an on-line searchable database in the fields of commercial and residential building design for searching and retrieving information from recommended building, construction and safety designs; providing a website that gives computer users the ability to subscribe to online publications permitting searches of electronic versions of international, federal, state and local building design and construction codes and standards; providing online non-downloadable software for use in the development of building, construction, and safety codes standards, regulations and rules; providing temporary use of on-line non-downloadable software for transmitting messages among online users in the field of international, federal, state and local building design and construction codes, standards, regulations and rules.
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 045:  Providing an on-line searchable database of recommended laws and regulations in the fields of building, construction and safety codes, standards, regulations and rules; providing an on-line database for searching and retrieving legal information from recommended international, federal, state and local building and construction codes, standards, regulations and rules.
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.


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

Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3998452, 4718932, and 5351097.


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 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 $1750 has been submitted with the application, representing payment for 5 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: /Dominic Sims/   Date: 02/08/2021
Signatory's Name: Dominic Sims
Signatory's Position: Chief Executive Officer
Signatory's Phone Number: Not Provided
Signature method: Sent to third party for signature
Payment Sale Number: 90518558
Payment Accounting Date: 02/08/2021

Serial Number: 90518558
Internet Transmission Date: Mon Feb 08 17:09:12 ET 2021
TEAS Stamp: USPTO/BAS-XXX.XXX.XXX.XX-202102081709122
92955-90518558-760fd22b42df4a039c4fc4552
b4ac87eb535aa0286c26ade1c7a38cef15dd866-
DA-09114317-20210208140834239733