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 December 4, 2006, the Examining Attorney maintained his refusal to register the mark on the grounds that when used in association with the identified goods the mark SMARTGRATE is merly descriptive.  The Offce action also required a substitute specimen be submitted.  Because Applicant's substitute specimen was not used in commerce prior to the filing of the application, which was filed under Section 1(a), Applicant must now amend its application to Section 1(b) and then submit an allegation of use. Accordingly, Applicant submits the necessary declaration to support an intent to use application under Section 1(b).

     Once the allegation of use is accepted, Applicant will amend the application so that the mark will be registered on the Supplemental Register.  Therefore, the Examiner can expect to receive an allegation of use in about one week from the submission from this response.  Because the resposne to the December 4, 2006 Office action is not due until June 4, 2007, Applicant submits that it will be able to fully address all of the concerns raised in the Office action within the applicable time limt.

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(b).
Deleted Filing Basis: 1(a)
New/Additional Basis:

Section 1(b), the applicant has 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. (15 U.S.C. Section 1051(b)).


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: /dougpiper/      Date: 05/09/2007
Signatory's Name: Doug Piper
Signatory's Position: Officer of the Applicant

Response Signature
Signature: /HSF/     Date: 05/09/2007
Signatory's Name: Hunter S. Freeman
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
Serial Number: 76639720
Internet Transmission Date: Wed May 09 14:10:10 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007050914101070
8407-76639720-370172ec721e886fa6bbd31a75
052d03bb0-N/A-N/A-20070509115348111339