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. 77333034 has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: ANDREW CORPORATION (standard characters)
Proposed (USPTO generated image): ANDREW (Standard Characters, see mark)

The mark consists of standard characters, without claim to any particular font, style, size, or color.

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant has amended the application to the single word mark ANDREW.  The original filing of the two word mark ANDREW CORPORATION was an initial filing error. 

            Pursuant to the Office Action, applicant provides the following claim of ownership. Applicant is the owner of U.S. Registration Nos. 403,521; 959,263; 1,861,667; and others. 

            Applicant appreciates the thorough review and suggestions from the Examining Attorney, and Applicant has clarified the identification of goods mostly as requested in the Office Action.  However, Applicant has carefully studied all of the proposed changes with both marketing and engineering persons at Applicant to make sure that all of the language is accurate.  There are some minor revisions and clarifications that have been made.  The revisions are made mostly with respect to International Class 9.  Additionally, the description in International Class 38 has been further revised by deleting the recitation of consulting services therein. 

            Finally, the Office Action includes a Section 2(d) refusal based on the alleged likelihood of confusion with prior United States Registration No. 3,012,310.  Applicant believes strongly that the services recited in the application are, in the real commercial world, significantly different from the services referenced in the prior registration.  Nevertheless, applicant has amended the identification of services in International Class 38 to remove the services that are alleged to be the cause of a likelihood of confusion.  Accordingly, the Section 2(d) refusal is now moot. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 007 for Radio antenna and transmission line equipment -- namely, coaxial antennas, coaxial cables and parts therefor; coaxial cable accessories, namely, transmitting inductors, impedance matching and phasing devices, phase monitors, and antenna code beacons and obstacle lights; base station antennas; point to point antennas; microwave antennas

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Telecommunications installation hand tools, namely, punch down tools, cable termination and connection tools
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Proposed: Class 008 for Telecommunications installation hand tools, namely, punch down tools, cable termination and cable connection tools
Filing Basis: Section 1(b), Intent to Use: 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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Base station antennas; point to point antennas; microwave antennas; optical distribution networks; radiating cable; splitters; indoor antennas; products, equipment, devices and components for telecommunications mobile location solutions, location based solutions and radio frequency spectrum management; mobile location platforms; network management and test tools; network development software ; remote radio heads; coaxial foam antennas; coaxial air and other specialty cable; cable connectors; cable connector assemblies; broadband cables; cable assemblies; waveguide; steel or metal infrastructure components, namely antenna mounts, cable support components, equipment support and mounting platforms; cable accessories, namely, surge protectors, cable hangers, adaptors, grounding kits; passive and active radio frequency components for extending wireless network or signal coverage; cross-band couplers; diplexers; triplexers; repeaters; bi-directional amplifiers; in-building wireless components, networks, and systems; radio frequency over optical fiber; distributed communications systems and components; wireless accessory products; elliptical waveguides; rigid and flexible waveguides; antenna system pressurization equipment; devices and products used in cellular communications, namely, wired, fiber optics and wireless repeaters used in mobile communications and indoor, in-building communication wireless and wired infrastructure products primarily in the cellular and PCS frequency bands for the purpose of extending the range and reach of bi-directional voice and data communications; and base station extender products and cell receiver and transmitter enhancers, namely, repeaters and bi-directional amplifiers to extend the range of base station communications; communications devices for radio, cellular and personal communications service frequency use, and parts therefor, namely, antennas, electrical and electronic devices for improving or modifying transmission and/or reception characteristics of antennas and of radio telephones, namely, antenna mounts, transmitters, receivers and transceivers and parts thereof, boosters, repeaters, distributed antennas, base stations, mobile telephone switching offices, amplifiers, filters, duplexers, combiners, conductors, and couplers, and parts and sub-assemblies thereof, call processing software and specialized digital signal processing software for use in the cellular, personal communications service and radio frequencies, fiber optic transceivers for transmitting and receiving information for radio, for cellular and personal communications service frequencies, for telephone, and for cable television, and units for testing, measuring and characterizing the RF signal properties in the radio, cellular and personal communications service frequencies; communication waveguide networks; television transmitting antennas; earth station antennas; computer networking hardware, peripherals and accessories, namely, token-ring bridges, adaptor cards, interfacing cards, port expansion cards, and emulation cards; radiating transmission lines; computer software for use in networking; electrical transmission equipment, namely, antennas, and masts and positioners therefor; waveguides; transmission lines; coaxial switching equipment; and parts and accessories for the foregoing; telecommunications cable, namely, coaxial, twisted pair, fiber optic cable, hybrids thereof, and connectors therefor; electric wires in the nature of patch cables; fiber optic interconnection and cross connection cables; telecommunications adaptors; telecommunications connectors, plugs, jacks, and connecting blocks; telecommunications devices that repeat, reshape or reformat signals from data terminals and controllers; telecommunications brackets, clips and clamps to house and support cable and telecommunications equipment all distributed as a unit; hardware to house and support electrical and optical cable and telecommunications equipment,namely, frames, cabinets, and horizontal and vertical cable managers; face plates for electrical or fiber optic connections; wireless access points for connecting wireless communication devices together to form a wireless network; hardware for use in networking, namely midspan power injectors and patch panels; zone wiring boxes; and software associated with operation of the foregoing, namely, computer software to manage, monitor, and control network infrastructure connectivity
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Proposed: Class 009 for Radio antenna and transmission line equipment, namely, radio frequency antennas, coaxial cables and parts therefor; coaxial cable accessories, namely, transmitting inductors, impedance matching and phasing devices, phase monitors, and antenna code beacons and obstacle lights; base station antennas; point to point antennas; microwave antennas; dual-polarized antennas; remote electrical downtilt antennas; WiMax and broadband antennas; radiating RF cables for indoor and tunnel applications, and fiber optic cable; signal splitters for RF apparatus; indoor antennas; products, equipment, devices and components for telecommunications mobile location solutions, location based solutions and radio frequency spectrum management, namely, coaxial switching equipment, radio antenna, frequency transmitters and receivers; mobile location computing and operating platforms; network management and test tools, namely, satellite dishes, processors, and receivers; network development software for the optimization of telecommunication networks; remote radio heads; coaxial foam cables, coaxial air and RF specialty cable; cable connectors; cable connector assemblies; broadband cables; cable assemblies; waveguides for high frequency and high power RF delivery; steel and metal infrastructure components for use in wireless communications, namely antenna mounts, cable support components, equipment support and mounting platforms; equipment cabinets and enclosures; cable accessories, namely surge protectors, cable hangers, adaptors, grounding kits; passive and active radio frequency components for extending wireless network and signal coverage; cross-band RF couplers; diplexers; triplexers; repeaters; bi-directional amplifiers; tower mounted amplifiers; multi-channel power amplifiers; in-building wireless components, networks, and systems consisting of operating platforms containing data transmitters and receivers, wireless networks, and gateways for collecting data; fiber optic systems modulated with radio frequencies; distributed communications systems and components consisting of operating platforms containing data transmitters and receivers, wireless networks, and gateways for collecting data; wireless accessory products, namely, receivers; elliptical waveguides for high frequency and high power RF delivery; rigid and flexible waveguides for high frequency and high power RF delivery; antenna system pressurization equipment for use in pressurizing RF transmission lines and antennas; devices and products used in cellular communications, namely, wired, fiber optics and wireless repeaters used in mobile communications and indoor, in-building communication wireless and wired infrastructure products primarily in the cellular and PCS frequency bands for the purpose of extending the range and reach of bi-directional voice and data communications; and base station extender products and cell receiver and transmitter enhancers, namely, repeaters and bi-directional amplifiers to extend the range of base station communications; communications devices for radio, cellular and personal communications service frequency use, and parts therefor, namely, antennas, electrical and electronic devices for improving, modifying transmission and reception characteristics of antennas and of radio telephones, namely, antenna mounts, transmitters, receivers and transceivers and parts thereof, boosters, repeaters, distributed antennas, base stations, mobile telephone switching offices, amplifiers, filters, duplexers, combiners, conductors, and couplers, and parts and sub-assemblies thereof; call processing software and specialized digital signal processing software for use in the cellular, personal communications service and radio frequencies; fiber optic transceivers for transmitting and receiving information for radio, for cellular and personal communications service frequencies, for telephone, and for cable television, and units for testing, measuring and characterizing the RF signal properties in the radio, cellular and personal communications service frequencies; television transmitting antennas; earth station antennas; computer networking hardware, peripherals and accessories, namely, token-ring bridges, adaptor cards, interfacing cards, port expansion cards, and emulation cards; radiating transmission lines; computer software for use in networking to connect network users; electrical transmission equipment, namely, antennas, and masts and positioners therefor; waveguides for high frequency and high power RF delivery; electrical transmission lines; coaxial switching equipment; telecommunications cable, namely, coaxial, twisted pair, fiber optic cable, and hybrid coaxial, twisted pair, fiber optical cable, and connectors therefor; electric wires in the nature of patch cables; fiber optic interconnection and cross connection cables; telecommunications adaptors; telecommunications connectors, plugs, jacks, and connecting blocks; telecommunications devices that repeat, reshape or reformat signals from data terminals and controllers; telecommunications brackets, clips and clamps to house and support cable and telecommunications equipment all distributed as a unit; hardware specially fitted to a house and support electrical and optical cable and telecommunications equipment, namely, frames, cabinets, and horizontal and vertical cable managers; face plates specially fitted for electrical and fiber optic connections; computer hardware, namely, wireless access points devices for connecting wireless communication devices together to form a wireless network; hardware for use in networking, namely midspan power injectors and patch panels; zone wiring boxes; computer software to manage, monitor, and control telecommunication network infrastructure connectivity
Filing Basis: Section 1(b), Intent to Use: 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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Design, development and project management relating to telecommunications and radio frequency systems and networks; Design, development relating to telecommunications mobile location solutions, location based services and systems, mobile location platforms or wireless location technology systems; telecommunications services, namely transport of text, data, or audio or visual digital images; automated attendant services for transport, retrieval and storage of text, data, or audio or visual digital images; wireless digital messaging; digital information management services, namely the selection, management and transmission of digital messages
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Proposed: Class 038 for Providing access to telecommunications network services, namely, providing access to transport data in the nature of text, audio, and visual digital images; wireless digital messaging; transmission of digital messages; communication via optical fiber networks
Filing Basis: Section 1(b), Intent to Use: 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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, development and project management relating to telecommunications and radio frequency systems and networks; Design, development relating to telecommunications mobile location solutions, location based services and systems, mobile location platforms or wireless location technology systems; data automation and collection service using proprietary software to evaluate, analyze and collect service data; consulting services in the field of telecommunications and information management, namely, design for others of methods for and collection and distribution of technical data and measured telecommunication system performance results in the field of wireless telecommunication systems; privacy and authentication services, namely data and voice encryption service, encryption key escrow and registration services and identity verification services; consulting and testing services performed in the field of telecommunications, information management services, data collection and network management
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Proposed: Class 042 for Technical support services, namely, troubleshooting through automated attendant services for retrieval of data; development, maintenance and updating of telecommunications and radio frequency systems and networks; design and development of telecommunications networks; data automation and collection service using proprietary software to evaluate, analyze and collect service data; data and voice encryption services; product testing in the field of telecommunications; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of wireless communication and mobile information access management, namely, design for others of methods for and collection and distribution of technical data and measured telecommunication system performance results in the field of wireless telecommunication systems; privacy and authentication services, namely data and voice encryption service, encryption key escrow and registration services and identity verification services; consulting and testing services performed in the field of telecommunications, information management services, data collection and network management
Filing Basis: Section 1(b), Intent to Use: 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)).

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 (Original Class: 007 ) for Identify verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet
Filing Basis: Section 1(b), Intent to Use: 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)).

SIGNATURE(S)
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: /John H. Thomas/      Date: 07/01/2008
Signatory's Name: John H. Thomas
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /John H. Thomas/     Date: 07/01/2008
Signatory's Name: John H. Thomas
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: 77333034
Internet Transmission Date: Tue Jul 01 11:20:03 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20080701112003531
700-77333034-42034f8beaf264463b53ab7b999
0eb7096-N/A-N/A-20080701110512211009