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. 86037543 DISCOVERY(Standard Characters, see http://uspto.report/TM/86037543/mark.png) has been amended as follows:

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

AMENDMENT

Sir or Madam:

In response to the Office Action mailed December 8, 2013, please rewrite the identification of goods as follows:

International Class 009:

Electronic and opto-electronic apparatus and instruments and electronic and opto-electronic apparatus for controlling, measuring, regulating and checking and for protecting and monitoring areas, premises or dangerous spots, namely, light barriers, reflection light barriers, surveillance cameras and monitors, safety switches, relays, bus systems, bus controllers and microcontrollers; photoelectric barriers that work in the infrared, visible or ultraviolet spectral regions in the nature of photoelectric sensors; apparatus for automatically detecting objects in a predetermined volume and for automatically inspecting the dimensions or quality of material or object surfaces, namely, infrared detectors, ultraviolet detectors and detectors for the visible spectral range for use in further manufacture; opto-electronic sensors; time-of-flight sensors in the nature of distance sensors; apparatus for detecting the position, location and shape of objects in the nature of stereo cameras, 3D-time-of-flight sensors, and laser scanners

International Class 037:

Assembly, installation, maintenance, upkeep and repair of electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensors

International Class 042:

Calibrating electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensors and parts and accessories thereof

　

REMARKS

The applicant acknowledges the statement in the Office Action that the Office Records have been searched and that no similar registered or pending mark has been found that would bar registration under Trademark Act §2(d).

The Applicant has amended its Identification of Goods as set forth above.

The corresponding Swiss Trademark application has been registered. Attached hereto is a copy of the corresponding Swiss Trademark Registration No. 649012.

The Applicant elects to delete the "intent-to-use" base under Trademark Act §1(b) and rely on the foreign registration basis (§44(e)), so that the present application can proceed to publication.

It is respectfully requested that the U.S. Patent and Trademark Office reconsider this application based on the foregoing. Should the Examining Attorney deem that any further action by the Applicant would be desirable in placing this application in better condition, it is respectfully requested that the Examining Attorney telephone the Applicant’s undersigned representative.

Respectfully submitted,

Stephen P. Burr

Attorney for Applicant

BURR & BROWN, PLLC

P.O. Box 7068

Syracuse, New York 13261

Telephone: (315) 233-8300

Facsimile: (315) 233-8320

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic and opto-electronic apparatus and instruments, electronic and opto-electronic apparatus for controlling, measuring, regulating and checking, especially apparatus for protecting and monitoring areas of premises or dangerous spots; photoelectric barriers that work in the infrared, visible or ultraviolet spectral regions; apparatus for automatically detecting objects in a predetermined volume and for automatically inspecting the dimensions or quality of materials' or objects' surfaces; opto-electronic sensors; time-of-flight sensors; apparatus for detecting the position, location and shape of objects
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 592032013 filed 07/25/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electronic and opto-electronic apparatus and instruments, electronic and opto-electronic apparatus for controlling, measuring, regulating and checking, especially apparatus for protecting and monitoring areas of premises or dangerous spots; Electronic and opto-electronic apparatus and instruments and electronic and opto-electronic apparatus for controlling, measuring, regulating and checking and for protecting and monitoring areas, premises or dangerous spots, namely, light barriers, reflection light barriers, surveillance cameras and monitors, safety switches, relays, bus systems, bus controllers and microcontrollers; photoelectric barriers that work in the infrared, visible or ultraviolet spectral regions; photoelectric barriers that work in the infrared, visible or ultraviolet spectral regions in the nature of photoelectric sensors; apparatus for automatically detecting objects in a predetermined volume and for automatically inspecting the dimensions or quality of materials' or objects' surfaces; apparatus for automatically detecting objects in a predetermined volume and for automatically inspecting the dimensions or quality of material or object surfaces, namely, infrared detectors, ultraviolet detectors and detectors for the visible spectral range for use in further manufacture; opto-electronic sensors; time-of-flight sensors; time-of-flight sensors in the nature of distance sensors; apparatus for detecting the position, location and shape of objects; apparatus for detecting the position, location and shape of objects in the nature of stereo cameras, 3D-time-of-flight sensors, and laser scannersClass 009 for Electronic and opto-electronic apparatus and instruments and electronic and opto-electronic apparatus for controlling, measuring, regulating and checking and for protecting and monitoring areas, premises or dangerous spots, namely, light barriers, reflection light barriers, surveillance cameras and monitors, safety switches, relays, bus systems, bus controllers and microcontrollers; photoelectric barriers that work in the infrared, visible or ultraviolet spectral regions in the nature of photoelectric sensors; apparatus for automatically detecting objects in a predetermined volume and for automatically inspecting the dimensions or quality of material or object surfaces, namely, infrared detectors, ultraviolet detectors and detectors for the visible spectral range for use in further manufacture; opto-electronic sensors; time-of-flight sensors in the nature of distance sensors; apparatus for detecting the position, location and shape of objects in the nature of stereo cameras, 3D-time-of-flight sensors, and laser scanners
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 59203/2013 filed 07/25/2013]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 649012 registered 09/25/2013 with a renewal date of __________ and an expiration date of 07/25/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-19216810143-100935159_._Swiss_Reg_649012_and_English_Translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Assembly, installation, maintenance, upkeep and repair of electronic and opto-electronic safety devices and apparatus, especially photoelectric barriers and other sensors, as well as parts and accessories thereof
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.

Based on Foreign Application: Applicant has had 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Assembly, installation, maintenance, upkeep and repair of electronic and opto-electronic safety devices and apparatus, especially photoelectric barriers and other sensors, as well as parts and accessories thereof; Assembly, installation, maintenance, upkeep and repair of electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensorsClass 037 for Assembly, installation, maintenance, upkeep and repair of electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensors
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number 59203/2013 filed 07/25/2013]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 649012 registered 09/25/2013 with a renewal date of __________ and an expiration date of 07/25/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-19216810143-100935159_._Swiss_Reg_649012_and_English_Translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Calibrating electronic and opto-electronic safety devices and apparatus, especially photoelectric barriers and other sensors as well as parts and accessories thereof
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.

Based on Foreign Application: Applicant has had 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Calibrating electronic and opto-electronic safety devices and apparatus, especially photoelectric barriers and other sensors as well as parts and accessories thereof; Calibrating electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensors and parts and accessories thereofClass 042 for Calibrating electronic and opto-electronic safety devices and apparatus, namely, photoelectric barriers and other sensors and parts and accessories thereof
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number 59203/2013 filed 07/25/2013]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Switzerland registration number 649012 registered 09/25/2013 with a renewal date of __________ and an expiration date of 07/25/2023 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-19216810143-100935159_._Swiss_Reg_649012_and_English_Translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Stephen P. Burr/      Date: 04/23/2014
Signatory's Name: Stephen P. Burr
Signatory's Position: Attorney of Record, NY
Signatory's Phone Number: 315-233-8300


Response Signature
Signature: /Stephen P. Burr/     Date: 04/23/2014
Signatory's Name: Stephen P. Burr
Signatory's Position: Attorney of Record, NY

Signatory's Phone Number: 315-233-8300

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: 86037543
Internet Transmission Date: Wed Apr 23 15:18:01 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201404231518012
55414-86037543-500d9a52df920769b3578d7f9
bc45a48391ed9fa0b4dea74b92696b761e03c-N/
A-N/A-20140423151238151835