Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 86436025 LITTELFUSE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86436025/large) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of (1) response in PDF format, and (2) third-party registrations referenced in the response has been attached.
Original PDF file:
evi_7340104251-20150812191039423047_._LITTELFUSE___response_to_office_action.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_7340104251-20150812191039423047_._third-party_registrations_covering_electrical_substations.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Electric generators; diesel generators; current generators; mobile electric power generators; starters for motors, including induction motors in single or parallel operation on pumps, fans, conveyor belts, centrifuges, and other high-inertia loads
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Electric generators; diesel generators; current generators; mobile electric power generators; starters for motors, including induction motors in single or parallel operation on pumps, fans, conveyor belts, centrifuges, and other high-inertia loads; variable frequency drives for large power applications in the oil and gas, marine, metal, and other industriesClass 007 for Electric generators; diesel generators; current generators; mobile electric power generators; starters for motors, including induction motors in single or parallel operation on pumps, fans, conveyor belts, centrifuges, and other high-inertia loads; variable frequency drives for large power applications in the oil and gas, marine, metal, and other industries
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2013 and first used in commerce at least as early as 01/01/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Fuses; electrical fuses; fuses for automobiles; fuse clips; mounting devices for fuses; circuit breakers; circuit breaker panel boards; electric circuit openers; electric circuit closers; electrical relays; electrical transformers; transistors; capacitors; electrical connectors; electrical components in the nature of filters; oscillators; electrical switches; semiconductors; rectifiers; integrated circuits; electronic circuits; circuit overload protector devices; circuit testers; circuits for heavy current; continuity test apparatus for electrical circuits; faulty circuit indicators; integrated circuit cards and components; integrated circuit modules; printed circuits; printed circuit boards; thermal relays; pilot light units adapted for panel mounting; electric automotive buzzers; automotive flashers; automotive fuses; panel-mounted fuse holders for use with electrical fuses; fuse blocks; fuse holders; fuse modules; fuse cap covers; fuse terminals; fuse reducers; fuse adapters; fuse junction blocks; fuse pullers; fuse storage containers; fuse power distribution modules; solar fuses; fuse distribution blocks; ground-fault and phase-voltage indicators; ground-fault relays; arc-flash relays; residual current relays; surge protectors; diodes; ground-fault circuit interrupters; diode arrays; LED circuit protection devices; motor protection relays; electric resistors; electrical controllers; control and protection units for electric generators; control and monitoring units for diesel and gas engines; electronic indicator panels; indicator lights embedded in equipment control panels; touch panels; user interfaces, namely, electric control panels and touchscreens for electrotechnical and electronic devices; electric annunciator panels; engine cylinder pressure analyzer; trailing-cable protection device, namely, combination ground-wire monitor and ground-fault relay; trailing-cable protection device, namely, parallel path isolator; computer operating software and firmware for electrical relays; varistors; relay current transformers; covers and mounting adapters for electrical relays; accessories for electrical relays and controls, namely, communication adapters, ground reference modules, high-tension couplers, relay test equipment, remote indication and reset assemblies, sensing resistors, termination assemblies, input modules, and diagnostic assemblies; direct current solenoids; power supplies; switchgears; switch houses; electrical arc detection and suppressing device used in low-voltage switchgear; electrical switchgear, namely, voltage-boosting devices for electric power lines; electronic controls for motors; programmable logic controllers for motors; electricity distribution consoles; e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; portable electric power centers for power distribution, monitoring, and controlling; aboveground and underground electrical substations; feeder protection relays; keypads for use with devices that control electricity; variable frequency drives for large power applications in the oil and gas, marine, metal, and other industries; portable power cable couplers; electric generator controls; neutral grounding resistors; electric monitoring relays; pump protection relays; timers; electric flashers; power and voltage monitors; liquid level and load sensors; power-monitoring control consoles; programmable logic panels for monitoring and controlling electrical power; electrical panels, namely, power-take-off panels, pump-control panels, and starter panels; electrical equipment, namely, portable dewatering substations for use in the mining industry, oil and gas industry, and other industrial applications; electronic control systems for machines; control unit for power distribution in transportation vehicles; power distribution boxes used in transportation vehicles; programmable module for configuration of vehicle power distribution systems; radio control module; electric fuse boxes; power controllers; electrical disconnect switches; semiconductor fuses; generator and engine diagnostic apparatus and equipment; optical sensors; position sensors; speed sensors; rotary sensors; fluid sensors; shock sensors; steering wheel switches; polymer resettable fuses; polymer positive temperature coefficient devices; gas discharge tubes; metal oxide varistors; multi-layer varistors; polymeric ESD suppressors; surge protection modules; proximity sensors; level sensors; flow sensors; low-voltage disconnect switches; battery separators; battery isolators; lift gate battery chargers; bi-stable relays; bi-stable solenoids; power distribution modules; low-current switches; ignition switches; high-current disconnect switches; battery disconnect switches; CAN modules; smart power modules
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/21/1944 and first used in commerce at least as early as 08/21/1944 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Fuses; electrical fuses; fuses for automobiles; fuse clips; mounting devices for fuses; circuit breakers; circuit breaker panel boards; electric circuit openers; electric circuit closers; electrical relays; electrical transformers; transistors; capacitors; electrical connectors; electrical components in the nature of filters; oscillators; electrical switches; semiconductors; rectifiers; integrated circuits; electronic circuits; circuit overload protector devices; circuit testers; circuits for heavy current; continuity test apparatus for electrical circuits; faulty circuit indicators; integrated circuit cards and components; integrated circuit modules; printed circuits; printed circuit boards; thermal relays; electric relays, namely, thermal relays; pilot light units adapted for panel mounting; electric pilot lights adapted for panel mounting; electric automotive buzzers; automotive flashers; automotive fuses; panel-mounted fuse holders for use with electrical fuses; fuse blocks; fuse holders; fuse modules; fuse cap covers; fuse terminals; fuse reducers; fuse adapters; fuse junction blocks; fuse pullers; fuse storage containers; fuse power distribution modules; solar fuses; fuse distribution blocks; ground-fault and phase-voltage indicators; ground-fault relays; arc-flash relays; residual current relays; surge protectors; diodes; ground-fault circuit interrupters; diode arrays; LED circuit protection devices; motor protection relays; electric relays, namely, motor protection relays; electric resistors; electrical controllers; control and protection units for electric generators; electrical controllers for electric generators; control and monitoring units for diesel and gas engines; electrical controllers for diesel and gas engines; electronic indicator panels; indicator lights embedded in equipment control panels; indicator lights for use in equipment control panels; touch panels; user interfaces, namely, electric control panels and touchscreens for electrotechnical and electronic devices; electric annunciator panels; engine cylinder pressure analyzer; trailing-cable protection device, namely, combination ground-wire monitor and ground-fault relay; trailing-cable protection device, namely, parallel path isolator; computer operating software and firmware for electrical relays; varistors; relay current transformers; covers and mounting adapters for electrical relays; accessories for electrical relays and controls, namely, communication adapters, ground reference modules, high-tension couplers, relay test equipment, remote indication and reset assemblies, sensing resistors, termination assemblies, input modules, and diagnostic assemblies; direct current solenoids; power supplies; switchgears; switch houses; electric switch houses; electrical arc detection and suppressing device used in low-voltage switchgear; electrical switchgear, namely, voltage-boosting devices for electric power lines; electronic controls for motors; programmable logic controllers for motors; electricity distribution consoles; e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; portable electric power centers for power distribution, monitoring, and controlling; aboveground and underground electrical substations; feeder protection relays; electric relays, namely, feeder protection relays; keypads for use with devices that control electricity; variable frequency drives for large power applications in the oil and gas, marine, metal, and other industries; portable power cable couplers; electric generator controls; neutral grounding resistors; electric monitoring relays; electric relays, namely, pump protection relays; pump protection relays; timers; electric flashers; power and voltage monitors; liquid level and load sensors; power-monitoring control consoles; programmable logic panels for monitoring and controlling electrical power; electrical panels, namely, power-take-off panels, pump-control panels, and starter panels; electrical equipment, namely, portable dewatering substations for use in the mining industry, oil and gas industry, and other industrial applications; electronic control systems for machines; control unit for power distribution in transportation vehicles; power distribution boxes used in transportation vehicles; programmable module for configuration of vehicle power distribution systems; radio control module; electric fuse boxes; power controllers; electrical disconnect switches; semiconductor fuses; generator and engine diagnostic apparatus and equipment; optical sensors; position sensors; speed sensors; rotary sensors; fluid sensors; shock sensors; switches for use in vehicle steering wheels; steering wheel switches; polymer resettable fuses; polymer positive temperature coefficient devices; gas discharge tubes; metal oxide varistors; multi-layer varistors; polymeric electrostatic discharge (ESD) suppressors; polymeric ESD suppressors; surge protection modules; proximity sensors; level sensors; flow sensors; low-voltage disconnect switches; battery separators; battery isolators; lift gate battery chargers; electric relays, namely, bi-stable relays; bi-stable relays; bi-stable solenoids; power distribution modules; low-current switches; vehicle ignition switches; ignition switches; high-current disconnect switches; battery disconnect switches; electrical controller area network (CAN) modules; CAN modules; smart electrical power distribution modules; smart power modulesClass 009 for Fuses; electrical fuses; fuses for automobiles; fuse clips; mounting devices for fuses; circuit breakers; circuit breaker panel boards; electric circuit openers; electric circuit closers; electrical relays; electrical transformers; transistors; capacitors; electrical connectors; electrical components in the nature of filters; oscillators; electrical switches; semiconductors; rectifiers; integrated circuits; electronic circuits; circuit overload protector devices; circuit testers; circuits for heavy current; continuity test apparatus for electrical circuits; faulty circuit indicators; integrated circuit cards and components; integrated circuit modules; printed circuits; printed circuit boards; electric relays, namely, thermal relays; electric pilot lights adapted for panel mounting; electric automotive buzzers; automotive flashers; automotive fuses; panel-mounted fuse holders for use with electrical fuses; fuse blocks; fuse holders; fuse modules; fuse cap covers; fuse terminals; fuse reducers; fuse adapters; fuse junction blocks; fuse pullers; fuse storage containers; fuse power distribution modules; solar fuses; fuse distribution blocks; ground-fault and phase-voltage indicators; ground-fault relays; arc-flash relays; residual current relays; surge protectors; diodes; ground-fault circuit interrupters; diode arrays; LED circuit protection devices; electric relays, namely, motor protection relays; electric resistors; electrical controllers; electrical controllers for electric generators; electrical controllers for diesel and gas engines; electronic indicator panels; indicator lights for use in equipment control panels; touch panels; user interfaces, namely, electric control panels and touchscreens for electrotechnical and electronic devices; electric annunciator panels; engine cylinder pressure analyzer; trailing-cable protection device, namely, combination ground-wire monitor and ground-fault relay; trailing-cable protection device, namely, parallel path isolator; computer operating software and firmware for electrical relays; varistors; relay current transformers; covers and mounting adapters for electrical relays; accessories for electrical relays and controls, namely, communication adapters, ground reference modules, high-tension couplers, relay test equipment, remote indication and reset assemblies, sensing resistors, termination assemblies, input modules, and diagnostic assemblies; direct current solenoids; power supplies; switchgears; electric switch houses; electrical arc detection and suppressing device used in low-voltage switchgear; electrical switchgear, namely, voltage-boosting devices for electric power lines; electronic controls for motors; programmable logic controllers for motors; electricity distribution consoles; e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; portable electric power centers for power distribution, monitoring, and controlling; aboveground and underground electrical substations; electric relays, namely, feeder protection relays; keypads for use with devices that control electricity; portable power cable couplers; electric generator controls; neutral grounding resistors; electric monitoring relays; electric relays, namely, pump protection relays; timers; electric flashers; power and voltage monitors; liquid level and load sensors; power-monitoring control consoles; programmable logic panels for monitoring and controlling electrical power; electrical panels, namely, power-take-off panels, pump-control panels, and starter panels; electrical equipment, namely, portable dewatering substations for use in the mining industry, oil and gas industry, and other industrial applications; electronic control systems for machines; control unit for power distribution in transportation vehicles; power distribution boxes used in transportation vehicles; programmable module for configuration of vehicle power distribution systems; radio control module; electric fuse boxes; power controllers; electrical disconnect switches; semiconductor fuses; generator and engine diagnostic apparatus and equipment; optical sensors; position sensors; speed sensors; rotary sensors; fluid sensors; shock sensors; switches for use in vehicle steering wheels; polymer resettable fuses; polymer positive temperature coefficient devices; gas discharge tubes; metal oxide varistors; multi-layer varistors; polymeric electrostatic discharge (ESD) suppressors; surge protection modules; proximity sensors; level sensors; flow sensors; low-voltage disconnect switches; battery separators; battery isolators; lift gate battery chargers; electric relays, namely, bi-stable relays; bi-stable solenoids; power distribution modules; low-current switches; vehicle ignition switches; high-current disconnect switches; battery disconnect switches; electrical controller area network (CAN) modules; smart electrical power distribution modules
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/21/1944 and first used in commerce at least as early as 08/21/1944 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Custom design and engineering of portable power distribution centers, electrical substations, and electrical apparatus and equipment; custom design and engineering of e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; product development services; providing a website featuring on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; providing temporary use of on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; consultation in the field of custom design of electrical apparatus and equipment; safety auditing and analysis of electrical systems; consultation in the field of electrical safety; product testing; product safety testing; product testing for regulatory compliance; product failure analysis services; materials testing and analyzing; electrical product evaluation
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2009 and first used in commerce at least as early as 01/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Custom design and engineering of portable power distribution centers, electrical substations, and electrical apparatus and equipment; custom design and engineering of e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; product development services; providing a website featuring on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; providing temporary use of on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; consultation in the field of custom design of electrical apparatus and equipment; safety auditing and analysis of electrical systems; consultation in the field of electrical safety; product testing; product safety testing; product testing for regulatory compliance; product failure analysis services; materials testing and analyzing; electrical product evaluationClass 042 for Custom design and engineering of portable power distribution centers, electrical substations, and electrical apparatus and equipment; custom design and engineering of e-houses, namely, apparatus and instruments for conveying, distributing, transforming, storing, regulating, or controlling electricity, all contained within prefabricated modular buildings and sold as a unit; product development services; providing a website featuring on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; providing temporary use of on-line, non-downloadable software tools to assist with the selection of parts, board layout design, and simulation analysis in connection with electronic devices; consultation in the field of custom design of electrical apparatus and equipment; safety auditing and analysis of electrical systems; product testing; product safety testing; product testing for regulatory compliance; product failure analysis services; materials testing and analyzing; electrical product evaluation
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2009 and first used in commerce at least as early as 01/00/2009 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Providing information in the field of electrical safety
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2009 and first used in commerce at least as early as 01/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing information in the field of electrical safety; consultation in the field of electrical safetyClass 045 for Providing information in the field of electrical safety; consultation in the field of electrical safety
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2009 and first used in commerce at least as early as 01/00/2009 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /meh/     Date: 08/12/2015
Signatory's Name: Michael E. Hall
Signatory's Position: Attorney of record, Virginia bar member

Signatory's Phone Number: 609-270-4918

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86436025
Internet Transmission Date: Wed Aug 12 19:19:35 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2015081219193578
1814-86436025-5405076887744cdab1fecfa996
5aa533995fe33f9d6cacbb4da05042e4a85a5675
-N/A-N/A-20150812191039423047