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. 86535723 GTO (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86535723/large) has been amended as follows:

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

Registration of the applied for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2158895, 2718923, 2045729, and 4263230.  

Applicant confirms it is the owner of these registrations and a claim of ownership is included with this Response.  Please note, the name change from Gates That Open, LLC to GTO Access Systems, LLC was submitted for recordation with the USPTO's Assignment Branch on November 17, 2015. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Gate operators powered by battery, electricity or solar power; home and business access control systems and monitoring devices; garage door openers and operators; access control systems; door, garage and gate entry systems comprising touch pads, intercoms, transmitters, sensors, receivers, alarms, and gate and door locks; security systems and parts therefor
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: Gate operators powered by battery, electricity or solar power; home and business access control systems and monitoring devices; home and business access control systems and monitoring devices, namely, anti-intrusion alarms, batteries, and parts therefor; garage door openers and operators; access control systems; access control systems comprising gate and door openers, batteries, parts and accessories therefor; door, garage and gate entry systems comprising touch pads, intercoms, transmitters, sensors, receivers, alarms, and gate and door locks; security systems and parts therefor; and parts thereforClass 009 for Gate operators powered by battery, electricity or solar power; home and business access control systems and monitoring devices, namely, anti-intrusion alarms, batteries, and parts therefor; garage door openers and operators; access control systems comprising gate and door openers, batteries, parts and accessories therefor; door, garage and gate entry systems comprising touch pads, intercoms, transmitters, sensors, receivers, alarms, and gate and door locks; and parts therefor
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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the black wording GTO below a red arc and above a blue arc; the color white is used to show transparency and is not claimed as a feature of the mark.

Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2158895, 2718923, 2045729, and others.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_38104197125-103635021_._signed_Declaration_-_GTO.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Stephen J. Todd
Signatory's Position: Director of Marketing

Response Signature
Signature: /Michael Lasky/     Date: 11/18/2015
Signatory's Name: Michael B. Lasky
Signatory's Position: Attorney of record, MN bar member

Signatory's Phone Number: 952-253-4106

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: 86535723
Internet Transmission Date: Wed Nov 18 15:52:17 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201511181552177
60086-86535723-540aa47a2dd664dc39eaf4d6e
7abcd2a2a78a8a4c7d977c20f324ca6e6cfef785
6-N/A-N/A-20151118103635021031