UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

This responds to the applicant’s April 2009 correspondence.

 

The applicant’s verified statement explaining the nature of the legal relationship between itself and the owner of pending Application Serial Nos. 77415999 and 77416010 (both prosecuted by counsel for the applicant herein) is acceptable; accordingly, the erstwhile citation of these applications as potential bars to registration is hereby withdrawn.

 

 

EXAMINER’S AMENDMENT

 

 

ISSUE/MAILING DATE: 4/24/2009

 

AMENDMENT:  In accordance with the authorization granted by Heller, William J. on March 27, 2009, the application has been AMENDED as indicated below.  Please advise the undersigned examining attorney immediately if there is an objection to the amendment.  Otherwise, no response is necessary.  TMEP §707.

 

The erstwhile citation based on Reg. No. 3082967 is hereby withdrawn because the Class 9 identification is amended to the following extent…

 

computer software and software algorithms for imaging relating to the analysis of photons in the visible and infra-red frequency bands, ... thermal imaging sensors relating to the analysis of photons in the visible and infra-red frequency bands, ... uncooled thermal imaging equipment relating to the analysis of photons in the visible and infra-red frequency bands, ... digital imaging systems relating to the analysis of photons in the visible and infra-red frequency bands, composed of integrated computers, high-speed digital cameras, image processing relating to the analysis of photons in the visible and infra-red frequency bands, and analysis software and digitizers for ... any other application that requires image recording relating to the analysis of photons in the visible and infra-red frequency bands,of events that cannot be detected by the human eye; …

 

…such that it now reads as follows…

 

Hand-held night vision binoculars with compass, infrared illumination, and range finding capabilities; shipboard long-range infrared search equipment to detect and track targets at sea or in littoral conditions, namely, dual-band (mid-wave and long-wave) infrared cameras, computer software and software algorithms for imaging relating to the analysis of photons in the visible and infra-red frequency bands, ... thermal imaging sensors relating to the analysis of photons in the visible and infra-red frequency bands, signal processing, data merge, data correlation, data reduction, data detection, target tracking, video processing, real-time data and video recording, track maintenance and reporting over command and control interfaces, and wide-area surveillance or sector surveillance mode control; rugged computer peripherals, namely, blank magnetic disks and flash memory devices; integrated military force protection systems, namely, computers comprising multiple sensors, namely, thermal sensors, radar sensors, sonar sensors, and TV sensors, command and control computers, computer displays and software for monitoring the sensors and remote operation and control of a weapon; fuel cells; microprocessor- and network-based electronic motor controls; aircraft carrier local area network (LAN)-based computer hardware and software for data storage, data communications and data processing; maritime and airborne electro-optical surveillance, sighting and targeting devices for detecting, recognizing, identifying, ranging, and designating targets, comprising high-resolution television cameras, thermal imaging sensors relating to the analysis of photons in the visible and infra-red frequency bands, laser range finders/designators and bore sight assemblies; uncooled thermal imaging equipment relating to the analysis of photons in the visible and infra-red frequency bands, and software for detecting, recognizing, identifying, ranging, and designating targets, used for unattended sensing, individual and crew-served weapons, fused and/or infrared goggles, physical and perimeter security, hand-held viewing and ranging and vehicle-mounted sights and drivers' viewing aids, namely, stabilized, lightweight gimbals that control sensors and which are suitable for mobile applications and mounting on a variety of land, sea and air vehicles; cooled infrared detectors and cooler assemblies for thermal imaging equipment, infrared detectors, dewars, and cryogenic coolers; semiconductor device, namely, a focal plane array for military, commercial and space applications; integrated voice and data transfer systems and tactical, secure and non-secure communication systems providing voice transmission for internal naval ship communications, comprising modems, computer terminals and digital telephones; deployable, crash-survivable avionics systems for military and commercial rotary- and fixed-wing aircraft composed of flight data recorders, cockpit voice recorders and emergency locator beacons; digital imaging systems relating to the analysis of photons in the visible and infra-red frequency bands, composed of integrated computers, high-speed digital cameras, image processing relating to the analysis of photons in the visible and infra-red frequency bands, and analysis software and digitizers for defense purposes, namely, to capture and record the release of weapons on board military aircraft and the launch of vehicles or fire control systems and for commercial uses, namely, car crash testing, automated manufacturing failure/fault detection analysis and any other application that requires image recording relating to the analysis of photons in the visible and infra-red frequency bands,of events that cannot be detected by the human eye; night vision scope and infrared night vision scope; night vision scope and infrared night vision scope attachable to cameras and video cameras and recording devices; air combat training, test, and evaluation equipment, namely, global positioning systems and inertial-based position and movement measurement instruments and radio communications equipment installable on an aircraft; airborne and ground-based electronic radio frequency emitters and data collectors for training aircrew and evaluating electronic warfare countermeasures; ground-based, ship-based, and man-portable radar antennas, radar antenna stands and pedestals, radar exciters, radio-frequency amplifiers, and radar signal processors; aviation electronics used to communicate aircraft telemetry and the relative position of other aircraft; aviation electronics to control the auto pilot and auto throttle devices on board an aircraft; electronic test and diagnostic equipment used for testing electronic and electro-optical components of ground vehicles, namely, tracked and wheeled vehicles, and strategic weapons, namely, ballistic missiles, and fixed-wing aircraft; microprocessor-based controllers, batteries, capacitors, inductors, pulse-forming networks, and related electrical power storage and delivery devices; electronics components for tactical wheeled and tracked vehicles, namely, video displays, video multiplexing and distribution devices, digital data busses and on-vehicle data network interfaces, electrical power distribution, and interfaces for vehicle engine and steering control; embedded diagnostic storage, dissemination, and analysis devices, namely, circuit card assemblies for wheeled and tracked ground vehicles, used for communicating with the internal vehicle diagnostic data busses of the vehicles to collect, store, analyze, and retransmit vehicle health and status information; mechanically-stabilized gimbals intended for use with electro-optical sensors and laser payloads; electronic sighting systems for weapons; laser-based aimers, pointers, and illuminators for military and paramilitary use; voice and data communications equipment, namely, telephones and radio-frequency (RF) transmission systems employing cryptographic hardware and software, to provide secure communications over public service telephone and military tactical networks; radio-frequency (RF) communications and signal collection equipment for shipboard platforms, air platforms, fixed ground station, vehicle-mounted, and soldier-borne applications, namely, antennae; antenna platforms, gimbals, and pedestals; RF tuners; RF modulator/demodulators; RF power amplifiers; RF frequency converters; low-noise oscillators; RF signal digitizers; and hardware and software signal processors for digital RF signal processing; shipboard data network equipment, routers, hubs, and switches, using electrical or optical transmission, for the distribution of data or voice information; radio-frequency (RF) direction-finding systems and components thereof, namely, antennae, RF tuners, signal digitizers, and signal processing software and hardware for computing the location of RF emissions; power control electronics, namely, microprocessor-based hardware and software used to control the operation of power conversion and distribution equipment; digital signal processing equipment, namely, microprocessor- and field programmable gate array-based processors on circuit card assemblies, and optical and electronic interconnection networks for digital signal distribution between circuit cards; electronic aviation components for fixed-wing and rotorcraft platforms, namely, cockpit control panels, video displays, video distribution (multiplexing and switching) systems, digital data busses, beacon rings, electrical transformers, aircraft landing lights, videocassette recorders; high-speed digital data recorders, namely, computers with specialized interface peripheral cards and software to control the digitization and storage of digital data to the computer's hard disk; military-grade laptop computers, tablet computers, and personal digital assistant (PDA) computers; military-grade vehicle computers, namely, computer workstations with external display, keyboard, and pointing devices for military and paramilitary in-vehicle use; military-grade flat panel liquid crystal displays; laptop computers, tablet computers, and personal digital assistant (PDA) computers for industrial and commercial applications; mobile computing peripherals, namely, docking stations for laptops and tablet computers, removable hard disk drives, removable compact disc and DVD readers and recorders, and removable batteries; vehicle computers, namely, ruggedized computer workstations with external display, keyboard, and pointing devices for industrial and commercial-vehicle use; flat panel liquid crystal displays for industrial and commercial applications; electrical power supplies; battery chargers; telecommunications and data networking hardware, namely, satellite ground stations, microwave transmitter and receivers, antennae, and telephony equipment; electronic test and diagnostic equipment used at aircraft flight lines and depot repair stations, used for testing electronic and electro-optical components of fixed-wing and rotary-wing aircraft; and electronic test and measurement devices for testing the performance of electronic weapon system components and their commercial equivalents, for tracking preventative maintenance requirements, and technical manuals therefor recorded on computer media; power conversion, distribution, and protection equipment for industrial and military applications, namely, voltage converters, rectifiers, electrical power frequency converters, alternating current to direct current electric power converters, direct current to alternating current electric power converters, electric power switchgear and load centers, power panels, circuit breakers, motor starters, and overload relays; computerized control consoles used to monitor the status and control the operation of nuclear reactors; helicopter avionics sensor equipment, namely, navigation systems and radio communications for providing autopiloting for hovering and lowspeed maneuvers

 

If the identification of goods and/or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

 

 

 

/J. Brendan Regan/

Examining Attorney

U.S. Patent and Trademark Office

Law Office 113

brendan.regan@uspto.gov

571/272.9212

 

 

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

                                                    APPENDIX TO OFFICE ACTION

 

 

From: Heller, William J. [mailto:WHeller@McCarter.com]
Sent: Friday, March 27, 2009 8:43 AM
To: Regan, Brendan
Cc: Agosta, Debra A.
Subject: RE: 77462269 et al

Brendan -

 

This applies to all of the applications.

 

You can suspend pending receipt of the CTM registrations.

 

As to unity of control, the attached document verifies that the companies you mentioned in your office action are indeed under common control.

 

I think this addresses all issues.  Please confirm.

 

Many thanks,

 

Bill

 

 

-----Original Message-----
From: Regan, Brendan [mailto:Brendan.Regan@USPTO.GOV]
Sent: Thursday, March 26, 2009 1:42 PM
To: Heller, William J.
Subject: RE: 77462269 et al

Apparently I've forgotten most of what I learned in college physics.

 

Shall I amend and re-suspend pending receipt of foreign regs?

 

Which ones -- all (77462401 77462180 77462222 77462269 77462308 77462332) or just the ones with DRS in them?

 

From: Heller, William J. [mailto:WHeller@McCarter.com]
Sent: Wednesday, March 25, 2009 10:48 AM
To: Regan, Brendan
Cc: Agosta, Debra A.
Subject: RE: 77462269 et al
Importance: High

Brendan,

 

We can do as you suggest with a slight modification, as follows:

("computer software and software algorithms for imaging relating to the analysis of photons in the visible and infra-red frequency bands, ... thermal imaging sensors relating to the analysis of photons in the visible and infra-red frequency bands, ... uncooled thermal imaging equipment relating to the analysis of photons in the visible and infra-red frequency bands, ... digital imaging systems relating to the analysis of photons in the visible and infra-red frequency bands, composed of integrated computers, high-speed digital cameras, image processing relating to the analysis of photons in the visible and infra-red frequency bands, and analysis software and digitizers for ... any other application that requires image recording relating to the analysis of photons in the visible and infra-red frequency bands,of events that cannot be detected by the human eye; ... electronic test and diagnostic equipment used for testing electronic and electro-optical components of ground vehicles ... embedded diagnostic storage, dissemination, and analysis devices, namely, circuit card assemblies for wheeled and tracked ground vehicles, used for communicating with the internal vehicle diagnostic data busses of the vehicles to collect, store, analyze, and retransmit vehicle health and status information; ... electronic test and diagnostic equipment used at aircraft flight lines and depot repair stations...")

 

We revised because your specific language seems to include visible photons as a part of infra-red, which is not correct and potentially confusing.  In addition, frequency and wavelength are two ways of saying the same thing, so it is not necessary to use both the term wavelength and frequency band in the same description. 

 

Many thanks,

 

Bill

-----Original Message-----
From: Regan, Brendan [mailto:Brendan.Regan@USPTO.GOV]
Sent: Wednesday, March 25, 2009 9:02 AM
To: Heller, William J.
Cc: Agosta, Debra A.
Subject: RE: 77462269 et al

Would you be amenable to amending the excerpted portion of the ID as follows?

("computer software and software algorithms for imaging relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands, ... thermal imaging sensors relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands, ... uncooled thermal imaging equipment relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands ... digital imaging systems relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands composed of integrated computers, high-speed digital cameras, image processing software relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands and analysis software and digitizers for ... any other application that requires image recording relating to the analysis of photons in the visible and thermal wavelengths in the infra-red frequency bands of events that cannot be detected by the human eye; ... electronic test and diagnostic equipment used for testing electronic and electro-optical components of ground vehicles ... embedded diagnostic storage, dissemination, and analysis devices, namely, circuit card assemblies for wheeled and tracked ground vehicles, used for communicating with the internal vehicle diagnostic data busses of the vehicles to collect, store, analyze, and retransmit vehicle health and status information; ... electronic test and diagnostic equipment used at aircraft flight lines and depot repair stations...")

If so, I would greatly prefer entering the amendment on my end rather than reviewing a TEAS (or paper) filing.

 

(Note that this is still giving your client the benefit of the doubt as to the registrant's ID, in which "scanners" may or may not be modified by the wording "digital slot-scan x-ray" -- just plain "scanners" (without limitation) being an acceptable entry in this Office's ID Manual.)

 

From: Heller, William J. [mailto:WHeller@McCarter.com]
Sent: Wednesday, March 25, 2009 8:23 AM
To: Regan, Brendan
Cc: Agosta, Debra A.
Subject: RE: 77462269 et al
Importance: High

Dear Brendan:

We submit this email in response to yours of March 16, 2009. This email addresses the asserted refusal to register under Section 2(d) of the Trademark Act, based on the citation to Registration No. 3,082,967.

Applicant DRS Technologies, Inc. has argued that there is no likelihood of confusion with the cited reference. You initially focused on x-rays in the identification, and we pointed out that the identifications of goods in the pending DRS applications do not mention x-rays. You then responded with an email pointing out your view that other parts of the DRS identification, not previously identified as problematic, also supported your 2(d) citation. Your email provided the following excerpt, with the highlighting yours:

("computer software and software algorithms for imaging, ... thermal imaging sensors, ... uncooled thermal imaging equipment ... digital imaging systems composed of integrated computers, high-speed digital cameras, image processing and analysis software and digitizers for ... any other application that requires image recording of events that cannot be detected by the human eye; ... electronic test and diagnostic equipment used for testing electronic and electro-optical components of ground vehicles ... embedded diagnostic storage, dissemination, and analysis devices, namely, circuit card assemblies for wheeled and tracked ground vehicles, used for communicating with the internal vehicle diagnostic data busses of the vehicles to collect, store, analyze, and retransmit vehicle health and status information; ... electronic test and diagnostic equipment used at aircraft flight lines and depot repair stations...")

None of the highlighted terms or goods involves x-ray technology and none of it is in the medical field. Therefore, DRS respectfully requests that you reconsider and withdraw your refusal to register based on the Adani mark.

As to "imaging": In all instances DRS’s products relate to the analysis of photons in the visible (in wavelengths that the human eye can see) and thermal (emitted from heat) wavelengths in the infra-red frequency bands. These systems do not use imaging that relies on radiating the object of interest, as is the case with x-ray imaging.

As to "diagnostic": DRS uses this term for confirming the proper operation of, and identifying physical problems in, physical equipment, and not for medical purposes. In other words, DRS diagnostic systems are used to analyze the proper operation of electrical hardware and the proper operation of thermal imaging systems. This is not for medical diagnosis or treatment.

As to "scanners": The DRS scanner is a magnetic head that finds and recovers signals on a magnetic tape. It is completely different from x-ray scanning for diagnostic purposes.

When taken in conjunction with DRS's prior response to your office action, the record clearly establishes that the 2(d) refusal should be withdrawn. We are prepared to submit a declaration to support the facts set forth above, and/or to consider changes to the identification of goods to overcome this action. Please let me know if you wish to receive such further submissions or if this email suffices. In addition, please let us know if you wish us to submit this response formally through TEAS.

Many thanks,

Bill Heller

 

 

 -----Original Message-----
From: Regan, Brendan [mailto:Brendan.Regan@USPTO.GOV]
Sent: Monday, March 16, 2009 4:36 PM
To: Heller, William J.
Subject: 77462269 et al

Hello,

 

There is still potential overlap in the parties' goods/services, perhaps even beyond Class 9 in your client's apps (e.g., "testing of electronic component devices, assemblies and systems, namely, sonar systems, combat systems, radar systems, magnetic video recordings rotary head scanner assemblies" vis-a-vis "scientific apparatus and instruments, namely, x-ray diagnostic equipment; measuring apparatus and instruments for use in the field of non-invasive control, namely, digital radiographic diagnostic systems, as well as apparatus and instruments for non-invasive checking for prohibited objects in the field of safety and security; electric measuring devices for use in the field of non-invasive control, namely, digital image processing systems; data processing equipment, namely, digital slot-scan x-ray imagers and scanners"), but certainly in Class 9 itself ("computer software and software algorithms for imaging, ... thermal imaging sensors, ... uncooled thermal imaging equipment ... digital imaging systems composed of integrated computers, high-speed digital cameras, image processing and analysis software and digitizers for ... any other application that requires image recording of events that cannot be detected by the human eye; ... electronic test and diagnostic equipment used for testing electronic and electro-optical components of ground vehicles ... embedded diagnostic storage, dissemination, and analysis devices, namely, circuit card assemblies for wheeled and tracked ground vehicles, used for communicating with the internal vehicle diagnostic data busses of the vehicles to collect, store, analyze, and retransmit vehicle health and status information; ... electronic test and diagnostic equipment used at aircraft flight lines and depot repair stations...").

 

Regards,

/Brendan/

 

 

 

 

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This email message from the law firm of McCarter & English, LLP is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.

 

 

This email message from the law firm of McCarter & English, LLP is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.