Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76639720 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

     In an Office action dated May 18, 2006, the Examining Attorney refused registration on the grounds that when used in connection with the identified goods that the mark is merely descriptive and suggested that Applicant amend the application for registration on the Supplemental Register.  The Examining Attorney also required a substitute specimen and a declaration attesting the the use of the specimen in commerce.  In response, Applicant requests that the application be amended for registration on the supplemental register.  In support of this request, Applicant has attached a substitute specimen and a declaration attesting to the use in commerce of the specimen. 

     While the specimen is currently being used in commerce, the date of first use of the specimen is AFTER the filing date of the application.  Therefore, Applicant requests that the application be amended to a Section 1(b), intent to use application.  However, because amendment of an application to the Supplemental Register requires the application to be a Section 1(a), actual use application, Applicant requests that the application be immediately amended from the Section 1(b) status currently requested to Section 1(a) to reflect the current use of the mark in commerce.  Essentially, Applicant is asking that the date of first use recited in the application as originally filed be amended to reflect 11/16/2006, the date on which the substitute specimen was used in commerce.  Applicant is willing to pay any fees that may be required to do so.  These amendments should address all the issues raised in the Office action and place the application in a condition for allowance.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Security grate, namely, a grid of metal tubing, and fiber-optic sensor line enclosed within the tubing
Original Filing Basis: 1(a).
Proposed: Class 009 for Security grate, namely, a grid of metal tubing, and fiber-optic sensor line enclosed within the tubing
Filing Basis: 1(a).
Section 1(a), Use in Commerce: The mark was first used at least as early as 12/00/2004 and first used in commerce at least as early as 11/16/2006, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 009.
The specimen(s) submitted consists of The specimen consists of a photograph showing the mark used on the packaging in which the goods are contained and sold..
For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to the filing of the Amendment to Allege Use (AAU)."
Specimen File1

Additional Statements

"The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register')."

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Doug Piper/      Date: 11/17/2006
Signatory's Name: Doug Piper
Signatory's Position: Officer of the Applicant

Response Signature
Signature: /Hunter S. Freeman/     Date: 11/17/2006
Signatory's Name: Hunter S. Freeman
Signatory's Position: Attorney for Applicant
        
Serial Number: 76639720
Internet Transmission Date: Fri Nov 17 10:10:59 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2006111710105944
4555-76639720-340f4e99dcfc1b68d53b0b8f81
efc9770b9-N/A-N/A-20061117094142325746