PR-Teas-Response to Post Reg Office Act

PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 10/31/2021)

---

PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 10/31/2021)

Response to Office Action for Post-Registration Matters

To the Commissioner for Trademarks:

The following is submitted for registration number: 4266657

FORM TEXT:

In response to the Post-Registration Office Action received by Registrant in Reg. No. 4266657, Registrant states the following:

The Registrant was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use for the following goods, during the relevant period for filing the affidavit of use: "Burglar and security alarms; fire, smoke and gas detecting alarms; fire, smoke, and gas detectors; intrusion detectors, namely, gate, door and window position sensors, gate, door and window contact sensors, motion sensors, door and window glass break sensors, and panic buttons; electronic apparatus namely, motion detectors; electric switches, electric relays, magnetic contacts; glass break detectors in the nature of electric sensors; electric and electronic, wired and wireless sensors, switches, scanners, transmitters for the processing of electrical and digital signals and data to audio and video receivers for use in monitoring and controlling security system equipment, access controls, and environmental conditions; battery chargers; fire, smoke, burglar, intrusion, access control, and gas detection system control panels; remote control transmitters for radio-controlled devices and radio receivers for remote controls; video surveillance equipment namely, cameras, digital cameras, network cameras and web cameras, combination video recorders, and network video products in the nature of network video computer servers, network video recorders, network video decoders, network video encoders; IP-cameras, namely, cameras capable of transmitting data and video via Internet Protocols; audio recorders, video recorders, video monitors, video management systems comprised of IP cameras, integrated pan-tilt-zoom cameras, camera positioning units especially adapted for fitting cameras in the nature of pan and tilt devices for cameras to allow for positioning by a remote operator, remote video controllers, video recorders, keyboards, electronic switchers for video signals, receivers, and video transmission devices sold as part of a system for operating closed circuit cameras; component parts of cameras, namely, camera enclosures, housings, assemblies, and mounts; camera lenses, namely, auto iris lenses, optical zoom lenses, digital zoom lenses; camera displays being video screens; digital audio players; electronic visitor management system comprising computer hardware, scanner, camera, printer and software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, and identifies who is allowed access to a building; access control security systems comprising computer hardware and software for use in controlling access to facilities and areas by control of gates, doors and windows; computer keypads; radio frequency proximity readers being readers radio frequency identification credentials for electronic access control systems; biometric identification apparatus; radio frequency identification tags; electronic door openers; electronic card readers, magnetic encoded card readers, and smart card readers; computer software for use in video surveillance or close circuit television systems, namely, cameras and sensors which capture, receive, store, manage and distribute data for the purpose of analysis, reporting and retrieval; computer management software for use in security and surveillance systems; computer hardware, communications hardware and computer software, for management, automation and monitoring of electronic sensors of physical activity, physical premises security systems, video cameras, environmental sensors, HVAC systems, home entertainment devices and home electronic devices; electronic visitor management software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, identifies who is allowed access to a building; audio amplifiers, receivers, tuners, equalizers, audio compressors, audio mixing consoles; audio speakers; electrical volume controls; warning devices, namely, bells, gongs, electric warning lights, sirens and voice sirens"

Registrant further notes that the submitted proof of use for each item in the identification listed above has been labeled to identify the corresponding item.

Registrant hereby deletes the following goods: "computer software for use in sending alarm notification to on-site and remote management facilities; computer software for the control of alarms and security, fire, and gas detection systems; attenuators; emergency position-indicating sound radio beacons and safety beacon lights for use as a directional guide along stairways and escape routes in fire and emergency situations"

SPECIMEN DESCRIPTION

the mark displayed on or in connection with the goods sold; all specimens have been appropriately labeled with the corresponding identification of goods as listed in the registration


FORM FILE NAME(S):

JPG file(s):
Attachments-1
Attachments-2
Attachments-3
Attachments-4
Attachments-5
Attachments-6
Attachments-7
Attachments-8
Attachments-9
Attachments-10
Attachments-11
Attachments-12
Attachments-13
Attachments-14
Attachments-15
Attachments-16
Attachments-17
Attachments-18
Attachments-19
Attachments-20
Attachments-21
Attachments-22
Attachments-23
Attachments-24
Attachments-25
Attachments-26
Attachments-27
Attachments-28
Attachments-29
Attachments-30
Attachments-31
Attachments-32
Attachments-33
Attachments-34
Attachments-35
Attachments-36
Attachments-37
Attachments-38
Attachments-39
Original PDF file:
29_SURVEILLANCE_SOFTWARE_PAGE_SPECIMEN_20207184115562.pdf
Converted PDF file(s) (3 pages)
Attachments-1
Attachments-2
Attachments-3
Original PDF file:
SURVEILLANCE_SOFTWARE_PAGE_SPECIMEN_202071841115470.pdf
Converted PDF file(s) (3 pages)
Attachments-1
Attachments-2
Attachments-3

The substitute specimen was in use in commerce during the relevant period for filing the 6-year or 10-year Section 8/71, as appropriate.The owner proposes to amend the following:
Current: Honeywell International Inc., having an address of
      115 Tabor Road
      Morris Plains, New Jersey 07950
      United States
      Phone: (973) 455-2000
      Fax: (973) 455-5904

Proposed: Honeywell International Inc., having an address of
      115 Tabor Road
      Morris Plains, New Jersey 07950
      United States
      Phone: (973) 455-2000
      Fax: (973) 455-5904
      Email Address: XXXX

The owner's/holder's current attorney information: Peter S. Sloane. Peter S. Sloane of Leason Ellis LLP, is located at

      One Barker Avenue, Fifth Floor
      White Plains, New York 10601
      United States
The docket/reference number is 313314-US3.

The phone number is 9148219073.

The fax number is 914-288-0023.

The email address is tmdocket@leasonellis.com

The owner's/holder's proposed attorney information: Peter S. Sloane. Peter S. Sloane of Leason Ellis LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      One Barker Avenue, Fifth Floor
      White Plains, New York 10601
      United States
The docket/reference number is 313314-US3.

The phone number is 9148219073.

The fax number is 914-288-0023.

The email address is tmdocket@leasonellis.com

Peter S. Sloane submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Peter S. Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 313314-US3.
Correspondence Information (proposed):
      Peter S. Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 313314-US3.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant 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)
Declaration Signature
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application, submission, or any registration resulting therefrom, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

Signature: /david a cohen/      Date: 08/18/2020
Signatory's Name: David A Cohen
Signatory's Position: Chief Trademark Counsel

Submission Signature
Signature: /chelsearussell/     Date: 08/18/2020
Signatory's Name: Chelsea A. Russell
Signatory's Position: Associate Attorney, Leason Ellis, CT Bar Member

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:    Peter S. Sloane
   Leason Ellis LLP
   
   One Barker Avenue, Fifth Floor
   White Plains, New York 10601
Mailing Address:    Peter S. Sloane
   Leason Ellis LLP
   
   One Barker Avenue, Fifth Floor
   White Plains, New York 10601
        
Serial Number: 85439855
Internet Transmission Date: Tue Aug 18 17:02:07 ET 2020
TEAS Stamp: USPTO/TRS-XX.XX.XX.XX-202008181702075871
77-4266657-20200818155858002286-N/A-N/A-
20200818155858002286