| 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
The table below presents the data as entered.
| 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.
90579935 DERMATRUE(Standard Characters, see http://uspto.report/TM/90579935/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 009 for Colour changing markers and indicators used to detect damaging UV light
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in
connection with the goods or 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.
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 2087862 filed 02/26/2021]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Colour changing markers and indicators used to detect damaging UV light;
UV light indicators in
the form of colour changing markers for detecting damaging UV lightClass 009 for UV light indicators in the form of colour changing markers for detecting damaging UV light
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in
connection with the goods or 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.
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 2087862 filed 02/26/2021]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
Applicant proposes to amend the following:
Current:
Class 035 for Design, manufacture, wholesale and retail sale of colour changing markers and indicators used to detect damaging UV light; Operating a website providing information in the field of skin
protection and indicators used to detect damaging UV light
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in
connection with the goods or 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.
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 2087862 filed 02/26/2021]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Design, manufacture, wholesale and retail sale of colour changing markers and indicators used to detect damaging UV light;
Wholesale and retail store services featuring colour changing markers and indicators used to detect damaging UV light;
Operating
a website providing information in the field of skin protection and indicators used to detect damaging UV lightClass 035 for Wholesale and retail store services featuring colour changing
markers and indicators used to detect damaging UV light
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in
connection with the goods or 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.
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 2087862 filed 02/26/2021]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Providing a website featuring health information in the field of skin protection and indicators used to detect damaging UV light
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in
connection with the goods or 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.
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 2087862 filed 02/26/2021]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
Correspondence Information (current):
NICHOLAS J. GINGO
PRIMARY EMAIL FOR CORRESPONDENCE: ngingo@rennerotto.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademarks@rennerotto.com; mailroom@rennerotto.com
The docket/reference number is MOFFT0141US.
Correspondence Information (proposed):
Nicholas J. Gingo
PRIMARY EMAIL FOR CORRESPONDENCE: ngingo@rennerotto.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ip@rennerotto.com
The docket/reference number is MOFFT0141US.
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: /Nicholas J. Gingo/ Date: 03/04/2022
Signatory's Name: Nicholas J. Gingo
Signatory's Position: Attorney of Record, Ohio bar member
Signatory's Phone Number: 2166211113
Signature method: Signed directly within the form
Response Signature
Signature: /Nicholas J. Gingo/ Date: 03/04/2022
Signatory's Name: Nicholas J. Gingo
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 2166211113 Signature method: Signed directly within the form
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: NICHOLAS J. GINGO
RENNER, OTTO, BOISSELLE & SKLAR, LLP
19TH FLOOR
1621 EUCLID AVE.
CLEVELAND, Ohio 44115
Mailing Address: Nicholas J. Gingo
RENNER, OTTO, BOISSELLE & SKLAR, LLP
19TH FLOOR
1621 EUCLID AVE.
CLEVELAND, Ohio 44115
PAYMENT: 90579935
PAYMENT DATE: 03/04/2022
Serial Number: 90579935
Internet Transmission Date: Fri Mar 04 11:22:07 ET 2022
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20220304112207096
602-90579935-800311d75c1dcabf37f4baaf839
8a2d7a1e61612c65e3c414f2d64adcc7a6b556-C
C-22041011-20220304111443367452