Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77836953 has been amended as follows:

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

This is in response to the Office Action issued on December 28, 2009.  Applicant respectfully requests that the refusal to register under Section 2(d) based on a likelihood of confusion with the marks in listed U.S. Reg. Nos. 3179898 and 3179897 be withdrawn.  Applicant and HI SEC International A/S, the cited registrant, though separate legal entities, constitute a single source such that there is no likelihood of confusion between the marks. Applicant has also amended the identification of goods.

Given the foregoing response, it is respectfully requested that the Applicant's mark be approved for publication in the Official Gazette for opposition purposes.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric and electronic apparatus and instruments; all the aforesaid goods relating to security and access control systems; digital video recording and storage apparatus and instruments; surveillance, measuring and checking (revision) apparatus and instruments; alarms and warning devices; parts and fittings for all the aforesaid goods; access control systems and parts and fittings therefore; integrated access control and alarm systems; integrated access control and alarm systems incorporating computer software and hardware, closed circuit televisions; encoded and encrypted magnetic cards; key pads and card readers; lighting and heating control systems; integrated access control, alarm, lighting and heating control systems; closed circuit television apparatus and instruments; time recording apparatus and instruments; specialist guard and security guard control software; guard and security guard control hardware; computer alarm systems and electronic installations; security management systems incorporating alarms; parts and fittings for the aforesaid goods
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)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number 2472878 registered 11/21/2007 with a renewal date of __________ and an expiration date of 11/21/2017 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Electric and electronic apparatus and instruments; Electric and electronic apparatus and instruments, namely: digital video recording and storage apparatus and instruments, namely blank DVD's blank CDs, optical disc drives and parts and fittings thereof; all the aforesaid goods relating to security and access control systems; electric and electronic video surveillance installations; digital video recording and storage apparatus and instruments; alarms and warning devices, namely, fire alarms, anti-intrusion alarms, smoke detectors, burglar alarms, alarm central units, theft alarms and personal security alarms; surveillance, measuring and checking (revision) apparatus and instruments; access control systems; alarms and warning devices; integrated access control and alarm monitoring systems; parts and fittings for all the aforesaid goods; integrated access control and alarm monitoring systems incorporating computer software and hardware, and closed circuit televisions; access control systems and parts and fittings therefore; encoded and encrypted magnetic cards; integrated access control and alarm systems; key pads and electronic card readers; integrated access control and alarm systems incorporating computer software and hardware, closed circuit televisions; electric control devices for heating and lighting management; integrated electric control devices for access control, alarm monitoring, heating, and lighting management; key pads and card readers; closed circuit television and parts and fittings thereof; lighting and heating control systems; time recording apparatus and instruments for surveillance applications, namely time clocks, punch clocks, chronographs, chronometers, and parts and fittings thereof; integrated access control, alarm, lighting and heating control systems; computer hardware and software for guard and security guard control; closed circuit television apparatus and instruments; computerized central alarm units; time recording apparatus and instruments; security management systems comprising anti-intrusion alarms and parts and fittings thereof; specialist guard and security guard control software; guard and security guard control hardware; computer alarm systems and electronic installations; security management systems incorporating alarms; parts and fittings for the aforesaid goodsClass 009 for Electric and electronic apparatus and instruments, namely: digital video recording and storage apparatus and instruments, namely blank DVD's blank CDs, optical disc drives and parts and fittings thereof; electric and electronic video surveillance installations; alarms and warning devices, namely, fire alarms, anti-intrusion alarms, smoke detectors, burglar alarms, alarm central units, theft alarms and personal security alarms; access control systems; integrated access control and alarm monitoring systems; integrated access control and alarm monitoring systems incorporating computer software and hardware, and closed circuit televisions; encoded and encrypted magnetic cards; key pads and electronic card readers; electric control devices for heating and lighting management; integrated electric control devices for access control, alarm monitoring, heating, and lighting management; closed circuit television and parts and fittings thereof; time recording apparatus and instruments for surveillance applications, namely time clocks, punch clocks, chronographs, chronometers, and parts and fittings thereof; computer hardware and software for guard and security guard control; computerized central alarm units; security management systems comprising anti-intrusion alarms and parts and fittings thereof
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)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ United Kingdom registration number 2472878 registered 11/21/2007 with a renewal date of __________ and an expiration date of 11/21/2017 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

SIGNATURE(S)
Response Signature
Signature: /jwm/     Date: 06/28/2010
Signatory's Name: John W. McGlynn
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: 77836953
Internet Transmission Date: Mon Jun 28 15:34:46 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2010062815344670
4329-77836953-460a5d5718bfadf1f5937831e6
f5c73d53-N/A-N/A-20100628141315564974