IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
RESPONSE TO OFFICE ACTION
Applicant responds to the Office Action identified above as follows.
Mark: VOX PLANNING, INC. Serial No.: 99369344 Office Action of: 2026-01-23 (NFIN20260123101502)
Response to Specimen Refusal
In response to the refusal of registration under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127, on the ground that the specimen of record does not show the applied-for mark as actually used in commerce with the services in International Class 37, Applicant submits herewith a substitute specimen together with the verified statement required by 37 C.F.R. §2.59(a) and TMEP §904.05.
The substitute specimen consists of [APPLICANT TO CONFIRM: description of the substitute specimen being submitted — e.g., advertising or marketing material, a photograph of business signage, or a webpage printout showing the mark in the sale, rendering, or advertising of the services]. The substitute specimen shows the mark used in direct association with Applicant's construction project management services in International Class 37, and thus satisfies 37 C.F.R. §2.56(b)(2) and TMEP §1301.04(a). See In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (specimen must show a direct association between the mark and the services). To the extent the substitute specimen is a webpage printout or screenshot, it includes the webpage's URL and the date it was accessed or printed, as required by 37 C.F.R. §2.56(c) and TMEP §904.03(i).
The substitute specimen is accompanied by the following statement, made in a declaration signed under 37 C.F.R. §2.20: "The substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application." Applicant notes that this statement is required for acceptance of the substitute specimen. TMEP §904.05.
- Decision point for Applicant: the substitute-specimen option requires a specimen that was in actual use in commerce for the Class 37 services at least as early as the September 2, 2025 filing date. [APPLICANT TO CONFIRM: that a specimen meeting this use date exists.]
- In the alternative, if no compliant specimen was in use as of the filing date, Applicant will amend the filing basis for International Class 37 from Section 1(a) to intent to use under Section 1(b), 15 U.S.C. §1051(b), as expressly permitted by the Office Action. See 37 C.F.R. §2.35(b); TMEP §806.03(c). Applicant acknowledges that this option defers the specimen requirement until the filing of a Statement of Use and entails additional fees and filing requirements.
Applicant respectfully submits that the substitute specimen and accompanying declaration resolve the specimen refusal, and requests that the refusal under Sections 1 and 45 be withdrawn.
Disclaimer
Applicant acknowledges the requirement to disclaim the wording "PLANNING, INC." and complies. The Office Action attaches evidence from Asana, Acuity International, and the Project Management Institute showing that "PLANNING" refers to a phase of construction project management, the services identified in the application, and further notes that entity designations such as "INC." must be disclaimed as lacking source-indicating capacity under TMEP §1213.03(d) and *Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.*, 128 U.S. 598, 602-03 (1888). Applicant does not contest the requirement.
Accordingly, Applicant hereby enters the following disclaimer in the standardized format specified by the examining attorney and TMEP §1213.08(a)(i):
No claim is made to the exclusive right to use "PLANNING, INC." apart from the mark as shown.
Applicant understands that the disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark as filed. *Schwarzkopf v. John H. Breck, Inc.*, 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. Applicant respectfully submits that entry of this disclaimer fully satisfies the disclaimer requirement and requests that the requirement be withdrawn as moot.
Trademark Attorney Suggested — Additional Issue Flagged (Not Automated)
The Office Action also raises the following issue: Trademark Attorney Suggested.
Office Action passage: "encouraged to hire a private attorney who specializes in trademark matters to assist in this process."
Strategy outline (suggested by the automated cross-check; verify before relying on it): - Decide whether to retain U.S.-licensed trademark counsel for the response; no substantive reply to this advisory is required - If counsel is retained, counsel must sign the response and file an appearance - If proceeding pro se, the individual applicant must personally sign the response
This issue was flagged by an automated LLM cross-check of the Office Action text; the deterministic issue detector did not classify it. Drafting for it is not automated. Verify the issue against the Office Action and prepare the substantive response manually.
Conclusion
For the foregoing reasons, applicant respectfully requests that the refusal(s) be withdrawn, the requirement(s) be deemed satisfied, and the application be approved for publication.
Respectfully submitted, [ATTORNEY NAME] [FIRM] [DATE] Attorney for Applicant