UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/445243
APPLICANT: Telephonics Corporation
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CORRESPONDENT ADDRESS: THOMAS A. O'ROURKE BODNER & O'ROURKE LLP 425 BROADHOLLOW ROAD MELVILLE NY 11747
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: AERCOM
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/445243
This letter responds to the applicant’s communication filed on July 25, 2003.
RESOLVED ISSUE:
The revised declaration in support of the application is acceptable.
MAINTAINED ISSUES:
Refusal under Section 2(d)
The refusal under Section 2(d) in connection with U.S. Reg. No. 2,634,311 is MAINTAINED. The Examining Attorney’s research indicates (1) that entities that provide location systems also provide communications equipment or services in connection with the same mark; and (2) that location systems are related goods to “communications systems.” Please see the attached evidence in support of this factual finding. The proposed amendment to the applicant’s identification of goods/services does not obviate the refusal.
The requirement to amend goods/services to be definite is MAINTAINED. The wording "electronic products, namely, communications systems" in the identification of goods is unacceptable as indefinite because the composition of the “systems” is not clear. Moreover, the wording of the identification as a whole remains too broad because it includes items classified in more than one class. Further, the wording "design … of customized communications systems" in the recitation of services is unacceptable as indefinite because it is not clear that the design services are rendered for others. The applicant may amend the identification to substitute the following wording, if accurate. TMEP §§ 1402.01, 1402.03 and 1402.11. The applicant must also amend the application to classify the goods/services in International Classes set forth below. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
NEW ISSUES:
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
The nature of the goods is not clear from the present record. In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type. If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
If the applicant does not provide the information required herein, registration may be refused. The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration. See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).
If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.
/ELIZABETH J. WINTER/
Trademark Examining Attorney
Law Office 113
(703) 308-9113 ext. 480; FAX (703) 746-6228
(703) 285-1184 (M, T, W, Th)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond to this Office action electronically, the applicant must:
o include the serial number in the subject line;
o send the response to ecom113@uspto.gov. Responses sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
o submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only. NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
o respond within six-months from the Office action mailing date, or within the period stated in the Office action;
o respond in English; and
o sign the response electronically, e.g. /john smith/. See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.
If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.” Note: only one e-mail address may be used for correspondence. TMEP §804.07.
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: SEPTEMBER 16, 2003
10083K
CLIENT: EW
LIBRARY: CMPCOM
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"MOBILE ASSETS" W/20 "COMMUNICATIONS SYSTEMS"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 46
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1,32,46
DISPLAY FORMAT: 40 VAR KWIC
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************01932**********************************
Copyright 2003 M2 Communications Ltd.
TELECOMWORLDWIRE
July 24, 2003
LENGTH: 131 words
HEADLINE: Welham opts for fleet management system from GlobeTrac
BODY:
Under the terms of the agreement GlobeTrac will provide its Locator L2000 wireless data communications system in Welham's transport fleet. This will let the company monitor driver activities, locate and manage mobile assets, obtain job status reports from the field, view and manage mechanical or maintenance data and evaluate the efficiency and utilisation of data, according to the company.
The Locator L2000 wireless data communications system operates on the Orange all-digital packet data network.
The cost of the implementation was not announced.
((Comments on this story may be sent to tww. ...
Copyright 2000 Phillips Business Information, Inc.
SATELLITE NEWS
January 31, 2000
SECTION: Vol. 23, No. 5
LENGTH: 878 words
HEADLINE: Teleglobe Gains Control Of Orbcomm To Aid Partner Orbital Science's
Financing
BODY:
... a co-founder of
Orbital Sciences, said the new financing enhances the strength of
Orbcomm's business and allows the company to accelerate its growth and
meet the market demand for Orbcomm services.
Those services provide two-way monitoring, tracking and
messaging services through the world's first commercial low-Earth-
orbit satellite-based data communications system.
Applications include tracking mobile assets such as trailers,
containers, rail cars, heavy equipment, fishing vessels, barges and
government assets; monitoring fixed assets such as electric utility
meters, oil and gas storage tanks, wells and pipelines and
environmental projects; and messaging services for consumers and
commercial and government entities.
Montreal-based Teleglobe is a global provider of broadband
services and ...
Copyright 1991 PR Newswire Association, Inc.
PR Newswire
February 22, 1991, Friday
SECTION: Financial News
DISTRIBUTION: TO BUSINESS, AUTO AND TECHNOLOGY EDITORS
LENGTH: 584 words
HEADLINE: ROCKWELL COMBINES AUTOMOTIVE ELECTRONICS AND MOBILE SATELLITE BUSINESSES
DATELINE: CEDAR RAPIDS, Iowa, Feb. 22
BODY:
... NYSE: ROK) announced today that its Automotive Electronics organization has been combined with its Mobile Communication Satellite Systems (MCSS) business. David G. Lammers, vice president of MCSS, will lead the new organization.
"The union of these two businesses will provide truck fleet operators with a single, experienced supplier of both vehicular data processing and communications systems," said Lammers. "With our present and planned products and services, we can be responsive to the total systems requirements of truck fleet operators as they move toward integrated mobile asset management systems of the '90s and beyond."
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
****************************028000******************************
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: SEPTEMBER 16, 2003
10083K
CLIENT: EW
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"MOBILE ASSETS" W/20 "COMMUNICATIONS SYSTEMS"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 144
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
7,16,26,73,80
DISPLAY FORMAT: 40 VAR KWIC
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************01938**********************************
Copyright 2003 King Communications Group
Defense Week
February 3, 2003, Monday
SECTION: DW Volume 24, Number 5
LENGTH: 149 words
HEADLINE: Comtech Earns $18 Million On Army Tracking System
BODY:
The orders were awarded to the company's Maryland-based Comtech Mobile Datacom subsidiary pursuant to an eight-year $418 million contract with the Army's Logistics Command. This brings the number of MTS units ordered to date to over 5,600. The MTS program provides the Logistics Command with the technology necessary to track and communicate in real time with its mobile assets.
Comtech Mobile Datacom Corp., based in Germantown, Md., provides satellite-based packet data communication systems and services for the land transportation, remote sensing, utility and aviation markets.
Copyright 2001 Gale Group, Inc.
ASAP
Copyright 2001 Maple Communications
Transport Technology Today
July 1, 2001
SECTION: Pg. 6
IAC-ACC-NO: 80193867
LENGTH: 2027 words
HEADLINE: INFORMATION TECHNOLOGY VISION.
BYLINE: Skydel, Seth
BODY:
... standards will hasten this process. These systems will be able to create a limited range network nearly anywhere, including on vehicles and even on employees. Best of all, the communication cost will be close to zero.
Transportation and mobile workforce clients are willing to pay for faster, more reliable service that is enabled by communications systems and expanded tracking capabilities. As new, more integrated designs come closer to meeting the industry's price points, mobile asset tracking is making the transition from a high-end service with questionable value to an essential business tool. In particular, the availability of miniaturized, low-cost GPS technology is allowing designers to integrate circuitry, dropping the cost of systems and shortening the payback period.
Also realizing explosive growth are wireless and hand-held technologies that can help ...
Copyright 2000 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Fleet Owner
October 2000
SECTION: truck.com; ISSN: 0731-9622
LENGTH: 209 words
HEADLINE: ASP for maintenance ; SIDEBAR
BYLINE: FLEET OWNER STAFF
BODY:
... other transportation businesses. The new
service includes access to a subscriber's own password-protected
Internet site with weather and road condition forecasts for the
interstate highway system, as well as severe weather warnings. Go to
www.accuweather.com.
£Track Communications Inc., a provider of wireless-based vehicle
fleet management and mobile asset-tracking solutions, announced it
has completed an integration of its HighwayMaster Series 5000 mobile
communications system with TruckMate for Windows, a dispatch
software system developed by Maddocks Systems Inc. Visit
www.highwaymaster.com.
With 2,200 leased tractors, truckload carrier Dart Transit expects a
new fuel and route optimization tool to save it $2.2 million a year.
The new software system, OptiStop from ...
LOAD-DATE: October 26, 2000
Copyright 2000 Phillips Business Information, Inc.
SATELLITE NEWS
January 31, 2000
SECTION: Vol. 23, No. 5
LENGTH: 878 words
HEADLINE: Teleglobe Gains Control Of Orbcomm To Aid Partner Orbital Science's
Financing
BODY:
... a co-founder of
Orbital Sciences, said the new financing enhances the strength of
Orbcomm's business and allows the company to accelerate its growth and
meet the market demand for Orbcomm services.
Those services provide two-way monitoring, tracking and
messaging services through the world's first commercial low-Earth-
orbit satellite-based data communications system.
Applications include tracking mobile assets such as trailers,
containers, rail cars, heavy equipment, fishing vessels, barges and
government assets; monitoring fixed assets such as electric utility
meters, oil and gas storage tanks, wells and pipelines and
environmental projects; and messaging services for consumers and
commercial and government entities.
Montreal-based Teleglobe is a global provider of broadband
services and ...
Copyright 1999 PennWell Publishing Company
Oil & Gas Journal
September 20, 1999
SECTION: SERVICES/SUPPLIERS; Pg. 87
LENGTH: 321 words
HEADLINE: TECHNOLOGY BUSINESS
BODY:
... monitoring and communicating with mobile and remote assets worldwide.
To market Orbcomm's date communications services, ATSC will leverage competencies in data communications and data processing, as well as its market relationships.
Orbcomm provides two-way monitoring, tracking and messaging services through the world's first-low-Earth orbit satellite-based data communications system. Orbcomm applications include monitoring of fixed assets such as electric utility meters, oil and gas storage tanks, wells and pipelines and environmental projects; tracking of mobile assets such as trailers, rail cars, heavy equipment, fishing vessels, barges and government assets; and messaging services for consumers and government entities.
ATSC is a wholly owned subsidiary of AlliedSignal Inc., an advanced manufacturing and technology company serving customers worldwide with aerospace and automotive products, chemicals, fibers, plastics and advanced materials.
Orbcomm is ...
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600