Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79296854 STEINEL (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7929685 4/large) has been amended as follows:

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

Based on the extent of the amendments to the goods and services herein including the deletion of all software, save software specifically for managing and controlling Applicant's products and environments where such products are used, Applicant respectfully requests the Examining Attorney withdraw the cited prior filed applications owned by Penrose Studios, Inc., namely, US App. Nos. 88/666,217 and 88/666,221, as the software therein is not remotely similar to the Applicant's revised goods and services. Next, Applicant respectfully requests the Examining Attorney withdraw the cited prior filed applications owned by Steinel America Inc., namely, US App. Nos. 88/331,089 and 88/331,109, as it is a wholly owned subsidiary of the Applicant, Steinel GMBH. A review of the prosecution history of these cited applications will reveal it overcame a refusal to register the cited applications due to the existence of the subject Applicant's prior registration for the STEINEL mark, namely, US Reg. No. 2,126,466 by the following statement: Applicant, Steinel America Inc., is a wholly owned subsidiary of Registrant, Steinel GMBH. Thus Steinel GMBH, as a sole owner of Steinel America Inc., has ownership of both the registration and this application. Applicant attaches the responses to office actions dated December 2, 2019 for the cited applications, namely, App. Nos. 88/331,089 and 88/331,109 supporting the aforementioned statements for the Examining Attorney's convenience. With respect to the refusal to register the subject mark based on a contention of a likelihood of confusion with US Reg. No. 4,519,683 registered on April 29, 2014, please be advised that the Applicant owns active US Reg. No. 2,126,466 for the STEINEL mark registered on January 6, 1998 some sixteen (16) years prior to the cited registration. Applicant has claimed ownership thereof. Moreover, the amended goods and services contained in the subject application are all related to the goods contained in US Reg. No. 2,126,466. Applicant's submits that the goods as recently amended in the Continued Use Declaration for the cited registration are not a sufficient basis to refuse registration of the subject application especially considering the Applicant's well established prior registered rights in the STEINEL mark. If the Examining Attorney has any questions or requires additional information, please contact the undersigned. Applicant's counsel thanks the Examining Attorney for her assistance.

EVIDENCE
Evidence has been attached: Responses to Office Actions
Original PDF file:
evi_631752310-20210719153 224668992_._68691.06240_- _Response_for_88331089.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_631752310-20210719153 224668992_._68691.06240_- _Resposne_for_88331109.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemical products for industrial, scientific, photographic, agricultural, horticultural and forestry purposes; adhesives for industrial purposes; industrial adhesives for use in construction; industrial adhesives for use in plumbing; industrial adhesives for coating and sealing
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Chemical products for industrial, scientific, photographic, agricultural, horticultural and forestry purposes; Chemical preparations for industrial purposes, except fungicides, herbicides, insecticides and parasiticides; adhesives for industrial purposes; industrial adhesives for use in construction; industrial adhesives for use in plumbing; industrial adhesives for coating and sealingClass 001 for Chemical preparations for industrial purposes, except fungicides, herbicides, insecticides and parasiticides; adhesives for industrial purposes; industrial adhesives for use in construction; industrial adhesives for use in plumbing; industrial adhesives for coating and sealing

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 007 for Power-driven tools; electric hot glue guns; cordless screwdrivers; soldering irons; motorised tools; motorised hand tools; dispensing machines; spraying machines; hot air blowers as parts of machines; electric hand tools; automatic welding machines; accessories for all the aforementioned goods
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Power-driven tools; Power-driven tools, namely, staple guns, nail guns, hot air guns, tackers, riveters and rivet guns; electric hot glue guns; cordless screwdrivers; electric hot air guns; soldering irons; electric soldering irons; motorised tools; spraying machines; motorised hand tools; electric hand tools, namely, staple guns, nail guns, hot air guns, tackers, riveters and rivet guns; dispensing machines; electric and gas welding machines; accessories for all the aforementioned goods, namely, glue sticks, rivets, staples, welding rods, and carrying cases therefore; hot air blowers as parts of machines; electric hand tools; automatic welding machines; accessories for all the aforementioned goodsClass 007 for Power-driven tools, namely, staple guns, nail guns, hot air guns, tackers, riveters and rivet guns; electric hot glue guns; electric hot air guns; electric soldering irons; spraying machines; electric hand tools, namely, staple guns, nail guns, hot air guns, tackers, riveters and rivet guns; electric and gas welding machines; accessories for all the aforementioned goods, namely, glue sticks, rivets, staples, welding rods, and carrying cases therefore

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 008 for Hand-operated hand tools and equipment; cutlery; foil cutters; accessories for all the above goods; pressure roller
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Hand-operated hand tools and equipment; Hand-operated hand tools, namely, staplers, tackers and riveters; cutlery; non-electric hand tools, namely, staplers, tackers, and riveters; foil cutters; accessories for all the above goods, namely, glue sticks, rivets, staples, welding rods, and carrying cases therefore; accessories for all the above goods; pressure rollerClass 008 for Hand-operated hand tools, namely, staplers, tackers and riveters; non-electric hand tools, namely, staplers, tackers, and riveters; accessories for all the above goods, namely, glue sticks, rivets, staples, welding rods, and carrying cases therefore

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 009 for Sensors; detectors; motion sensors; motion sensors for safety lamps; electronic components for lighting purposes; lighting controllers; sensor devices; heat sensors; proximity sensors; ambient light sensors; infrared sensors; digital sensor devices; heart rate sensor devices; distance sensors; magnetic sensors; measuring sensors; motion detectors; sensors for luminaires; sensor software; infrared presence detectors; illumination meters; application software; software; mobile apps; scientific, research, navigational, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detection, checking, control, rescue and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, storing, regulating or controlling the distribution or use of electricity; electronic installations for lighting, alarm and home automation, as far as included in class 09; motion, presence, brightness, temperature and gas sensors based on semiconductor, infrared, radio and/or microwave technology and associated electronic evaluation and signalling apparatus; manually operated electrical measuring apparatus, in particular in the form of voltage, continuity, capacitance, resistance and conduction testers; data processing equipment and computers, for applications in lighting and sensor technology and electronic measuring technology, including interface and converter modules for data processing equipment; radiation detectors, in particular detectors for infrared radiation and associated electronic control circuits; acoustic detectors and associated electronic control circuits; electronic detectors against objection theft and/or fire alarms; metal detectors; electrical power line detectors; software for smart home products; electronic security system for the home network; home automation equipment; home network equipment; temperature scanners [not for medical purposes]
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Sensors; Sensors, namely, pressure sensors; detectors; motion sensors; motion sensors for lights; motion sensors for safety lamps; electronic components for lighting purposes, namely, lighting ballasts; electronic components for lighting purposes; lighting controllers; heat sensors; sensor devices; proximity sensors; ambient light sensors; infrared sensors; distance sensors; magnetic sensors; digital sensor devices; motion detectors; heart rate sensor devices; light sensors for luminaires; downloadable and recorded sensor software for managing and controlling lighting; infrared presence detectors; measuring sensors; illumination meters; electronic installations for lighting, alarm and home automation, namely, automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power; sensors for luminaires; manually operated electrical measuring apparatus, in particular in the form of voltage, continuity, capacitance, resistance and conduction testers; sensor software; radiation detectors, in particular detectors for infrared radiation and associated electronic control circuits; acoustic detectors and associated electronic control circuits; electronic detectors against objection theft in the nature of theft alarms and fire alarms; application software; metal detectors; software; electrical power line detectors; mobile apps; downloadable and recorded software for smart home products for operating home automation systems comprised of computer hardware, wireless and wired controllers; scientific, research, navigational, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detection, checking, control, rescue and teaching apparatus and instruments; home automation equipment, namely, computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power; apparatus and instruments for conducting, switching, transforming, storing, regulating or controlling the distribution or use of electricity; home network equipment, namely, network routers; electronic installations for lighting, alarm and home automation, as far as included in class 09; temperature scanners not for medical purposes; motion, presence, brightness, temperature and gas sensors based on semiconductor, infrared, radio and/or microwave technology and associated electronic evaluation and signalling apparatus; data processing equipment and computers, for applications in lighting and sensor technology and electronic measuring technology, including interface and converter modules for data processing equipment; electronic detectors against objection theft and/or fire alarms; software for smart home products; electronic security system for the home network; home automation equipment; home network equipment; temperature scanners [not for medical purposes]Class 009 for Sensors, namely, pressure sensors; motion sensors; motion sensors for lights; electronic components for lighting purposes, namely, lighting ballasts; lighting controllers; heat sensors; proximity sensors; ambient light sensors; infrared sensors; distance sensors; magnetic sensors; motion detectors; light sensors for luminaires; downloadable and recorded sensor software for managing and controlling lighting; infrared presence detectors; illumination meters; electronic installations for lighting, alarm and home automation, namely, automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power; manually operated electrical measuring apparatus, in particular in the form of voltage, continuity, capacitance, resistance and conduction testers; radiation detectors, in particular detectors for infrared radiation and associated electronic control circuits; acoustic detectors and associated electronic control circuits; electronic detectors against objection theft in the nature of theft alarms and fire alarms; metal detectors; electrical power line detectors; downloadable and recorded software for smart home products for operating home automation systems comprised of computer hardware, wireless and wired controllers; home automation equipment, namely, computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power; home network equipment, namely, network routers; temperature scanners not for medical purposes

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 011 for Apparatus and installations for lighting purposes; electrical lighting apparatus, including indoor and outdoor luminaires, garden luminaires, nightlights and sensor-controlled luminaires, the aforementioned lighting apparatus also for use in lighting systems; torches; electrical luminaires and parts thereof, also with integrated sensors; lighting apparatus, lamps and instruments; lighting, including sensors; lighting with integrated sensors; lighting accessories; accessories for outdoor and indoor lighting; solid-state lighting apparatus; sensor-controlled luminaires; spotlights; spare parts and accessories for the aforementioned
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Apparatus and installations for lighting purposes; Apparatuses for lighting purposes, namely, lighting fixtures; electrical lighting apparatus, including indoor and outdoor luminaires, garden luminaires, nightlights and sensor-controlled luminaires, the aforementioned lighting apparatus also for use in lighting systems; installations for lighting purposes; torches; electrical lighting apparatus, namely, indoor and outdoor luminaires, garden luminaires, nightlights and sensor-controlled luminaires, the aforementioned lighting apparatus also for use in lighting systems; electrical luminaires and parts thereof, also with integrated sensors; electrical torches for lighting; lighting apparatus, lamps and instruments; electrical luminaires and structural parts thereof, also with integrated sensors; lighting, including sensors; lighting fixtures, including lighting fixtures with sensors; lighting with integrated sensors; lighting fixtures with integrated sensors; lighting accessories; solid-state lighting apparatus, namely, led luminaires; accessories for outdoor and indoor lighting; sensor-controlled electric luminaires; solid-state lighting apparatus; spotlights; sensor-controlled luminaires; hot air blowers; structural parts for the aforementioned goods; spare parts and accessories for the aforementionedClass 011 for Apparatuses for lighting purposes, namely, lighting fixtures; installations for lighting purposes; electrical lighting apparatus, namely, indoor and outdoor luminaires, garden luminaires, nightlights and sensor-controlled luminaires, the aforementioned lighting apparatus also for use in lighting systems; electrical torches for lighting; electrical luminaires and structural parts thereof, also with integrated sensors; lighting fixtures, including lighting fixtures with sensors; lighting fixtures with integrated sensors; solid-state lighting apparatus, namely, led luminaires; sensor-controlled electric luminaires; spotlights; hot air blowers; structural parts for the aforementioned goods

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 042 for Scientific and technological services and research services and related design services; technical design and technical project planning of electronic systems for lighting, alarm and home automation; transfer of technical know-how in the above-mentioned fields; scientific and industrial research and development in the field of sensor and lighting technology and electrical and electronic heat, tool and measurement technology; development, programming and implementation of software
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Scientific and technological services and research services and related design services; Technical design and technical project planning of electronic systems for lighting, alarm and home and commercial automation; technical design and technical project planning of electronic systems for lighting, alarm and home automation; technological consulting services relating to in the field of lighting, alarm and home and commercial automation; transfer of technical know-how in the above-mentioned fields; scientific and industrial research and development in the field of sensor and lighting technology and electrical and electronic heat, tool and measurement technology; development, programming and implementation of softwareClass 042 for Technical design and technical project planning of electronic systems for lighting, alarm and home and commercial automation; technological consulting services relating to in the field of lighting, alarm and home and commercial automation

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Steinel GmbH      Email Address: XXXX

Proposed: Steinel GmbH,
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a smaller orange circle to the left of a larger orange circle to the left of the stylized black wording STEINEL.

Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2126466.

Correspondence Information (current):
      DAX ALVAREZ
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@swlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dalvarez@swlaw.com; jbellio@swlaw.com

The docket/reference number is 68691.06240.
Correspondence Information (proposed):
      DAX ALVAREZ
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@swlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dalvarez@swlaw.com; jbellio@swlaw.com

The docket/reference number is 68691.06240.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /dax alvarez/     Date: 07/19/2021
Signatory's Name: Dax Alvarez
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 213.929.2500 Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    DAX ALVAREZ
   SNELL & WILMER L.L.P.
   SUITE 1900
   400 EAST VAN BUREN STREET
   PHOENIX, Arizona 85004-2202
Mailing Address:    DAX ALVAREZ
   SNELL & WILMER L.L.P.
   SUITE 1900
   400 EAST VAN BUREN STREET
   PHOENIX, Arizona 85004-2202
        
Serial Number: 79296854
Internet Transmission Date: Mon Jul 19 15:58:11 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20210719155811203
687-79296854-78046e87818f57dc32eb1f79deb
afb7da1c2ccde445f09c7783ef6e713b9859ac-N
/A-N/A-20210719153224668992