TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

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

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PTO Form 1960 (Rev 9/2007)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85966360 INSITE(Standard Characters, see http://uspto.report/TM/85966360/mark.png) 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 Asset monitoring system, comprised of telematics control unit, antenna, connection to machine controller and web interface, and digital productivity tools suite comprising electronic transmitters, receivers, circuitry, microprocessors, and software and downloadable mobile software applications for machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes, all for use in and incorporation into mobile construction machines
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.

Proposed:
Tracked Text Description: Asset monitoring system, comprised of telematics control unit, antenna, connection to machine controller and web interface, and digital productivity tools suite comprising electronic transmitters, receivers, circuitry, microprocessors, and software and downloadable mobile software applications for machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes, all for use in and incorporation into mobile construction machines; Asset monitoring system comprised of telematics control unit, namely, wireless internet devices which provide telematics services and have a cellular phone function, antennas, electrical connections to electronic machine controllers and web interface and digital productivity tools suite comprising of electronic transmitters, receivers, circuits, microprocessors, and software downloadable mobile software applications for determining and monitoring machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes, all in use and incorporation in mobile forage, forestry, utility installation, mining and construction machinesClass 009 for Asset monitoring system comprised of telematics control unit, namely, wireless internet devices which provide telematics services and have a cellular phone function, antennas, electrical connections to electronic machine controllers and web interface and digital productivity tools suite comprising of electronic transmitters, receivers, circuits, microprocessors, and software downloadable mobile software applications for determining and monitoring machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes, all in use and incorporation in mobile forage, forestry, utility installation, mining and construction machines
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing earth moving machines operational data services, namely, data for machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes for machine service and management, through components integrated into earth moving machines, namely telematics control unit, antenna, connection to machine controller, electronic transmitters, receivers, circuitry, microprocessors and software, interacting with global positioning systems, cellular networks, wireless internet and satellite technology connected with a customer service center
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.

Proposed:
Tracked Text Description: Providing earth moving machines operational data services, namely, data for machine global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes for machine service and management, through components integrated into earth moving machines, namely telematics control unit, antenna, connection to machine controller, electronic transmitters, receivers, circuitry, microprocessors and software, interacting with global positioning systems, cellular networks, wireless internet and satellite technology connected with a customer service center; Providing earth moving machines operational data services, namely, permitting data creation, compilation, management, analysis, monitoring, movement, access, collection, electronic review, calculation, performance, report generation, notification by electronic means, fleet management and access to cloud-based web applications for machine data of global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes for machine maintenance, repair service, and management, through components integrated into mobile forage, forestry, utility installation, mining and construction machines, namely electronic transmitters, receivers, circuitry, microprocessors and software, interacting with global positioning systems, cellular networks, wireless internet and satellite technology connected with a customer service centerClass 035 for Providing earth moving machines operational data services, namely, permitting data creation, compilation, management, analysis, monitoring, movement, access, collection, electronic review, calculation, performance, report generation, notification by electronic means, fleet management and access to cloud-based web applications for machine data of global position, fuel utilization, engine on or off, machine hours of usage, alert indicators, fault codes for machine maintenance, repair service, and management, through components integrated into mobile forage, forestry, utility installation, mining and construction machines, namely electronic transmitters, receivers, circuitry, microprocessors and software, interacting with global positioning systems, cellular networks, wireless internet and satellite technology connected with a customer service center
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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /ber/     Date: 07/07/2014
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 612.336.4619

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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 85966360
Internet Transmission Date: Mon Jul 07 10:02:52 EDT 2014
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XX-201407071002522
51128-85966360-500cfd2389e4d18b4ddbf3996
98b578a0c73876af38e7cdad40974334e691f5c7
6-N/A-N/A-20140707095740970862