PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
77836953 |
LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
MARK SECTION (no change) |
ARGUMENT(S) |
This is in response to the Office Action issued on July 19, 2010. Applicant respectfully requests that the refusal to register under Section 2(d) based on likelihood of confusion with the
marks in listed U.S. Reg. Nos. 3179898 and 3179897 be withdrawn. Applicant, which has changed its name to G4S Technology Limited (copy of evidence of name change attached) is the parent company
of HI SEC International A/S, the cited registrant. Applicant has also amended the identification of goods as suggested by the Examining Attorney.
Given the foregoing response, it is respectfully requested that the Applicant's mark be approved for publication in the Official Gazette for opposition purposes.
|
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_6320917811-142248333_._CERTIFICATE_OF_NAME_CHANGE_-_WAS-166US.PDF |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\778\369\77836953\xml3\ROA0002.JPG |
DESCRIPTION OF EVIDENCE FILE |
Certificate of Change of Name |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
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) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2472878 |
FOREIGN REGISTRATION
COUNTRY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
11/21/2007 |
FOREIGN EXPIRATION DATE |
11/21/2017 |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
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 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 for use in security and access control
systems; electric and electronic video surveillance installations; electric and electronic video surveillance
installations for use in security and access control systems; 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; integrated access control and alarm monitoring systems comprised of computer access control and security software, computer 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; time recording apparatus and instruments for surveillance applications, namely, time clocks, punch
clocks, chronographs for use as specialized time recording apparatuses, chronometers, and parts and fittings thereof; computer hardware and software for guard
and security guard control; computer hardware and software for use in monitoring access to facilities for use by specialist guard and security guard control
systems; computerized central alarm units; security management systems comprising anti-intrusion alarms and parts and fittings
thereof |
FINAL DESCRIPTION |
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 for use in security and access control systems; electric and electronic video surveillance installations for use in security
and access control systems; 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 comprised of computer access control and security software,
computer 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 for use as specialized time recording apparatuses, chronometers, and parts and fittings thereof; computer hardware and
software for use in monitoring access to facilities for use by specialist guard and security guard control systems; computerized central alarm units; security management systems comprising
anti-intrusion alarms and parts and fittings thereof |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2472878 |
FOREIGN REGISTRATION
COUNTRY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
11/21/2007 |
FOREIGN EXPIRATION DATE |
11/21/2017 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/jwm/ |
SIGNATORY'S NAME |
John W. McGlynn |
SIGNATORY'S POSITION |
Attorney for Applicant |
DATE SIGNED |
01/19/2011 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Jan 19 14:54:36 EST 2011 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0110119145436083087-77836
953-470e13a187f28fa59557a
b22d197b487e9-N/A-N/A-201
10119142248333922 |
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 July 19, 2010. Applicant respectfully requests that the refusal to register under Section 2(d) based on likelihood of confusion with the
marks in listed U.S. Reg. Nos. 3179898 and 3179897 be withdrawn. Applicant, which has changed its name to G4S Technology Limited (copy of evidence of name change attached) is the parent company
of HI SEC International A/S, the cited registrant. Applicant has also amended the identification of goods as suggested by the Examining Attorney.
Given the foregoing response, it is respectfully requested that the Applicant's mark be approved for publication in the Official Gazette for opposition purposes.
EVIDENCE
Evidence in the nature of Certificate of Change of Name has been attached.
Original PDF file:
evi_6320917811-142248333_._CERTIFICATE_OF_NAME_CHANGE_-_WAS-166US.PDF
Converted PDF file(s) (1 page)
Evidence-1
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, 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
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, 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 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 for use in security and access control systems;
electric and electronic video surveillance installations;
electric and electronic video surveillance installations for use in security and access
control systems;
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;
integrated access
control and alarm monitoring systems comprised of computer access control and security software, computer 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;
time recording apparatus and instruments for surveillance applications, namely, time clocks, punch clocks, chronographs for use as
specialized time recording apparatuses, chronometers, and parts and fittings thereof;
computer hardware and software for guard and security guard
control;
computer hardware and software for use in monitoring access to facilities for use by specialist guard and security guard control systems;
computerized central alarm units;
security management systems comprising anti-intrusion alarms and parts and fittings thereofClass 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, all for use in security and access control systems; electric and electronic video surveillance installations for use in security and access control systems; 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 comprised of computer access control and security software, computer 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 for use as specialized time recording apparatuses, chronometers, and parts and fittings thereof; computer hardware and software for use in monitoring access to facilities
for use by specialist guard and security guard control systems; 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: 01/19/2011
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: Wed Jan 19 14:54:36 EST 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2011011914543608
3087-77836953-470e13a187f28fa59557ab22d1
97b487e9-N/A-N/A-20110119142248333922