Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77853677 SILVER SPRING(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=77853677) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for enabling energy consumers, including public utility customers, to track, view, and monitor energy consumption information, namely, information related to usage analysis, cost analysis, bill analysis, bill estimation, energy budgeting, neighborhood comparisons, community analysis, environmental analysis, rate comparisons, weather modeling, and HVAC modeling, as well as to receive energy-related reports; computer hardware; computer software and networking equipment, namely, network hardware and software for developing, securing, monitoring and managing machine to machine networks; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy in the public utilities, gas utilities, electric utilities and water utilities industries; computer software and networking equipment, namely, network hardware and software for data collection applications, namely, distribution automation and demand side management applications; communications networking systems consisting of computer hardware, WAN (wide area network) operating software, and software enabling public utilities to communicate with and control in-home appliances and electronic devices; radio frequency wireless communications technology, namely, network interface devices, relays, access points, and computer network bridges; one-way and two-way automated meter reading devices for use in the energy and utility fields; computer hardware and software for use in transmitting data one-way and two-way between a data computing network and remote communications devices, namely, wireless network repeaters, routers, personal computers, laptop computers, cellular phones and handheld computers; electronic interface modules for receiving and transmitting energy-related information and requests between and among commodity meters, electronic vehicle charging stations, electronic devices and a host computer over a wide area network and a local area network; computer database management software used for receiving and monitoring energy usage information from multiple remote commodity meters in the public utilities, gas utilities, electric utilities and water utilities industries; electric utility meters; network interface cards; gateway routers in the nature of computer control hardware; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage and advanced meter reading data; advanced meter communications devices, namely, transmitters, receivers and antennas used to collect, store and process consumption data, distribution automation data, demand response data and other information in the energy and utility fields, including electric, water, gas, solar energy
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 009, the mark was first used at least as early as 09/00/2002 and first used in commerce at least as early as 09/00/2002 .

Proposed:
Tracked Text Description: Computer software for enabling energy consumers, including public utility customers, to track, view, and monitor energy consumption information, namely, information related to usage analysis, cost analysis, bill analysis, bill estimation, energy budgeting, neighborhood comparisons, community analysis, environmental analysis, rate comparisons, weather modeling, and HVAC modeling, as well as to receive energy-related reports; computer hardware; computer software and networking equipment, namely, network hardware and software for developing, securing, monitoring and managing machine to machine networks; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy in the public utilities, gas utilities, electric utilities and water utilities industries; computer software and networking equipment, namely, network hardware and software for data collection applications, namely, distribution automation and demand side management applications; communications networking systems consisting of computer hardware, WAN (wide area network) operating software, and software enabling public utilities to communicate with and control in-home appliances and electronic devices; radio frequency wireless communications technology, namely, network interface devices, relays, access points, and computer network bridges; one-way and two-way automated meter reading devices for use in the energy and utility fields; computer hardware and software for use in transmitting data one-way and two-way between a data computing network and remote communications devices, namely, wireless network repeaters, routers, personal computers, laptop computers, cellular phones and handheld computers; electronic interface modules for receiving and transmitting energy-related information and requests between and among commodity meters, electronic vehicle charging stations, electronic devices and a host computer over a wide area network and a local area network; computer database management software used for receiving and monitoring energy usage information from multiple remote commodity meters in the public utilities, gas utilities, electric utilities and water utilities industries; electric utility meters; electric utility meters, namely, gas meters, electric meters, and water meters; network interface cards; gateway routers in the nature of computer control hardware; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage and advanced meter reading data; advanced meter communications devices, namely, transmitters, receivers and antennas used to collect, store and process consumption data, distribution automation data, demand response data and other information in the energy and utility fields, including electric, water, gas, solar energyClass 009 for Computer software for enabling energy consumers, including public utility customers, to track, view, and monitor energy consumption information, namely, information related to usage analysis, cost analysis, bill analysis, bill estimation, energy budgeting, neighborhood comparisons, community analysis, environmental analysis, rate comparisons, weather modeling, and HVAC modeling, as well as to receive energy-related reports; computer hardware; computer software and networking equipment, namely, network hardware and software for developing, securing, monitoring and managing machine to machine networks; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy in the public utilities, gas utilities, electric utilities and water utilities industries; computer software and networking equipment, namely, network hardware and software for data collection applications, namely, distribution automation and demand side management applications; communications networking systems consisting of computer hardware, WAN (wide area network) operating software, and software enabling public utilities to communicate with and control in-home appliances and electronic devices; radio frequency wireless communications technology, namely, network interface devices, relays, access points, and computer network bridges; one-way and two-way automated meter reading devices for use in the energy and utility fields; computer hardware and software for use in transmitting data one-way and two-way between a data computing network and remote communications devices, namely, wireless network repeaters, routers, personal computers, laptop computers, cellular phones and handheld computers; electronic interface modules for receiving and transmitting energy-related information and requests between and among commodity meters, electronic vehicle charging stations, electronic devices and a host computer over a wide area network and a local area network; computer database management software used for receiving and monitoring energy usage information from multiple remote commodity meters in the public utilities, gas utilities, electric utilities and water utilities industries; electric utility meters, namely, gas meters, electric meters, and water meters; network interface cards; gateway routers in the nature of computer control hardware; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage and advanced meter reading data; advanced meter communications devices, namely, transmitters, receivers and antennas used to collect, store and process consumption data, distribution automation data, demand response data and other information in the energy and utility fields, including electric, water, gas, solar energy

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 09/00/2002 . and first used in commerce at least as early as 09/00/2002 .

Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of photos of a distribution automation bridge, a relay, and a product date sheet showing the mark as two separate words .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-2-63197243249-180939228_._SILVER_SPRING_class_9__bridge_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-2-63197243249-180939228_._SILVER_SPRING_class_9__relay_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-2-63197243249-180939228_._SILVER_SPRING_class_9__product_data_sheet_.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Miscellaneous Statement
This responds to the August 12, 2012 office action in which the Examiner required Applicant to submit a new specimen on the ground that the mark in the original specimen did not match the mark in the drawing. Specifically, the Examiner notes that the original specimen appears to display the mark as one word, namely, SILVERSPRING, whereas the drawing shows the mark as two words, SILVER SPRING. On a subsequent telephone call with the Examiner, Applicant's attorney explained that (a) SILVER SPRING is Applicant's house brand, and is always used as two distinct words, (b) the issue here appears to be that because of the stylization of the font used in the original specimen, coupled with the size of the image in the specimen, the Examiner was not able to see the space between the words SILVER and SPRING. The Examiner acknowledged this possibility and instructed Applicant's attorney to submit a larger image(s), or other specimens, which more clearly depict the spacing of between the words. Accordingly, Applicant hereby submits the attached substitute specimens, consisting of (a) a larger image of one of the original specimens, which clearly shows the additional spacing between the letter "R" in SILVER and the letter "S" in SPRING, (b) an additional specimen showing use of SILVER SPRING as two distinct words, on relevant class 9 goods, and in a different style/font than that in the first specimen, and (c) a document which shows use of the two-word mark on relevant goods, and also shows an example of the Applicant's use of SILVER SPRING as two words in plain text to describe its goods. In light of these specimens, Applicant respectfully requests the Examiner to accept the Statement of Use and allow the SILVER SPRING mark to register.


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Alan Hodes/      Date: 02/12/2013
Signatory's Name: Alan Hodes
Signatory's Position: Chief Counsel

Response Signature
Signature: /kbelur/     Date: 02/12/2013
Signatory's Name: Kiran K. Belur
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-988-8500

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: 77853677
Internet Transmission Date: Tue Feb 12 19:25:23 EST 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201302121925230
65203-77853677-500daf1ffef2103b1560e6a0e
7e4909137d3262283724fedd45d5bcc21e1b3f2c
-N/A-N/A-20130212180939228036