Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86617566 HUGHES(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86617566/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 Applicant's arguments and Exhibits to response has been attached.
Original PDF file:
evi_741231985-20160215180328100414_._Hughes_Class_9.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
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Evidence-5
Original PDF file:
evi_741231985-20160215180328100414_._Exhibit.pdf
Converted PDF file(s) ( 56 pages)
Evidence-1
Evidence-2
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, security and other home and office electrical power monitoring and control applications; Remote controls; Electronic devices for environmental monitoring, control, and automation; computer software for use in environmental monitoring, control, and automation systems; electronic devices and computer software that allow users to remotely interact with environmental monitoring, control, and automation systems; electronic devices and computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Video surveillance and recording devices, healthcare monitoring and control devices, irrigation control and monitoring devices, entertainment control and monitoring devices, faucet control devices, weather monitoring devices; software application for use on computers and hand-held devices to control devices and energy usage in homes and businesses from a remote location; Electronic devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, security alarms and sensors; environmental hazard detectors, namely, devices to detect and record the presence of water, humidity levels, heat, temperature, movement, motion, and sound; lighting control apparatus, namely, devices to sense ambient light; software application for use on computers and hand-held devices to monitor and control, from a remote location by wired or wireless communication, devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, environmental hazard detectors, lighting equipment, security alarms and sensors
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: Home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, security and other home and office electrical power monitoring and control applications; Remote controls; Electronic devices for environmental monitoring, control, and automation; computer software for use in environmental monitoring, control, and automation systems; electronic devices and computer software that allow users to remotely interact with environmental monitoring, control, and automation systems; electronic devices and computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Video surveillance and recording devices, healthcare monitoring and control devices, irrigation control and monitoring devices, entertainment control and monitoring devices, faucet control devices, weather monitoring devices; Video surveillance and recording devices in the nature of remote video monitoring system consisting of a camera and video monitor for recording and transmitting images to a remote location; software application for use on computers and hand-held devices to control devices and energy usage in homes and businesses from a remote location; Irrigation control and monitoring devices, namely, flow meters and flow switches, Electric controls for home entertainment systems; Weather monitoring devices, namely, devices for monitoring external temperature, wind speed and direction, barometric pressure, and humidity; Computer application software for use on computers and hand-held, namely, mobile phones and tablet computers, to control devices and energy usage in homes and businesses from a remote location; Electronic devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, security alarms and sensors; software application for use on computers and hand-held devices to monitor and control, from a remote location by wired or wireless communication, devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, environmental hazard detectors, lighting equipment, security alarms and sensors; Environmental hazard detectors, namely, devices to detect and record the presence of water, humidity levels, heat, temperature, movement, motion, and sound; Lighting control apparatus, namely, devices to sense ambient light; Computer application software for use on computers and hand-held, mobile phones and tablet computers, to monitor and control lighting, cameras, smoke detectors, doors, motion sensors, sprinklers systems, and carbon monoxide, from a remote location by wired or wireless communication; Devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, environmental hazard detectors, lighting equipment, and security alarms and sensorsClass 009 for Home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, security and other home and office electrical power monitoring and control applications; Remote controls; Electronic devices for environmental monitoring, control, and automation; computer software for use in environmental monitoring, control, and automation systems; electronic devices and computer software that allow users to remotely interact with environmental monitoring, control, and automation systems; electronic devices and computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Video surveillance and recording devices in the nature of remote video monitoring system consisting of a camera and video monitor for recording and transmitting images to a remote location; Irrigation control and monitoring devices, namely, flow meters and flow switches, Electric controls for home entertainment systems; Weather monitoring devices, namely, devices for monitoring external temperature, wind speed and direction, barometric pressure, and humidity; Computer application software for use on computers and hand-held, namely, mobile phones and tablet computers, to control devices and energy usage in homes and businesses from a remote location; Electronic devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, security alarms and sensors; Environmental hazard detectors, namely, devices to detect and record the presence of water, humidity levels, heat, temperature, movement, motion, and sound; Lighting control apparatus, namely, devices to sense ambient light; Computer application software for use on computers and hand-held, mobile phones and tablet computers, to monitor and control lighting, cameras, smoke detectors, doors, motion sensors, sprinklers systems, and carbon monoxide, from a remote location by wired or wireless communication; Devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, environmental hazard detectors, lighting equipment, and security alarms and sensors
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 hereby adds the following class of goods/services to the application:
New: Class 010 for healthcare monitoring and control devices, namely, blood pressure, heart rate, blood sugar, and weight monitors, wearables for tracking metabolic activity and vital sign statistics, devices for monitoring body temperature and respiratory conditions, calorie intake monitoring devices, fitness and exercise monitoring devices, and glucose monitoring devices
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 hereby adds the following class of goods/services to the application:
New: Class 011 for Irrigation control devices, namely, spray nozzles; faucet control devices, namely, faucet taps and water control valves
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.

FEE(S)
Fee(s) in the amount of $550 is being submitted.

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. § 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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Max S. Gratton/      Date: 02/15/2016
Signatory's Name: Max S. Gratton
Signatory's Position: Attorney of record, Colorado bar member
Signatory's Phone Number: (303) 706-4506


Response Signature
Signature: /Max S Gratton/     Date: 02/15/2016
Signatory's Name: Max S Gratton
Signatory's Position: Attorney of Record, Colorado bar member

Signatory's Phone Number: (303) 706-4506

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.

        
RAM Sale Number: 86617566
RAM Accounting Date: 02/16/2016
        
Serial Number: 86617566
Internet Transmission Date: Mon Feb 15 18:14:46 EST 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20160215181446777
236-86617566-55082bb2ae7f84dc44538364aa3
2c3a1943c1e915768c7127648ce8dff52cfdb2-D
A-11573-20160215180328100414