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. 86800968 MODULUS(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86800968/large) has been amended as follows:

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

Citing Section 2(d) and U.S. Reg. No. 4755560,  the Examining Attorney refused registration, but only with respect to part of Applicant's goods in  Class 9:  "This refusal applies to the following goods: hardware development kits for the foregoing devices comprised of connectors and electronics components; software development kits comprised of software components for developing software for controlling the foregoing devices, including code, binaries, drivers, and instructions."

With this response Applicant is amending its Class 9 goods description to delete the goods cited by the Examining Attorney ("hardware development kits for the foregoing devices comprised of connectors and electronics components; software development kits comprised of software components for developing software for controlling the foregoing devices, including code, binaries, drivers, and instructions").  This amendment should fully resolve the Section 2(d) refusal.  Applicant requests that upon acceptance of the amendment, the refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; mobile phones; cameras; personal digital assistants; portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; laptop computers; tablet computers; interfaces and peripheral devices for computers and handheld digital devices; USB (universal serial bus) hardware; electrical cells and batteries; solar panels for the production of electricity; computer software for use in organizing, transmitting, manipulating, and reviewing audio files on portable and handheld digital electronic devices; electric connections and connectors; plug connectors; cable connectors; fiber optic connectors; magnetic connectors; power supply connectors and adaptors for use with portable electronic devices; computer software and firmware for operating the foregoing devices; hardware development kits for the foregoing devices comprised of connectors and electronics components; software development kits comprised of software components for developing software for controlling the foregoing devices, including code, binaries, drivers, and instructions
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: Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; mobile phones; cameras; personal digital assistants; portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; laptop computers; tablet computers; interfaces and peripheral devices for computers and handheld digital devices; USB (universal serial bus) hardware; electrical cells and batteries; solar panels for the production of electricity; computer software for use in organizing, transmitting, manipulating, and reviewing audio files on portable and handheld digital electronic devices; electric connections and connectors; plug connectors; cable connectors; fiber optic connectors; magnetic connectors; electric, mechanical or magnetic connectors featuring magnets; power supply connectors and adaptors for use with portable electronic devices; computer software and firmware for operating the foregoing devices; hardware development kits for the foregoing devices comprised of connectors and electronics components; software development kits comprised of software components for developing software for controlling the foregoing devices, including code, binaries, drivers, and instructionsClass 009 for Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; mobile phones; cameras; personal digital assistants; portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; laptop computers; tablet computers; interfaces and peripheral devices for computers and handheld digital devices; USB (universal serial bus) hardware; electrical cells and batteries; solar panels for the production of electricity; computer software for use in organizing, transmitting, manipulating, and reviewing audio files on portable and handheld digital electronic devices; electric connections and connectors; plug connectors; cable connectors; fiber optic connectors; electric, mechanical or magnetic connectors featuring magnets; power supply connectors and adaptors for use with portable electronic devices; computer software and firmware for operating the foregoing 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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
MODULUS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


Miscellaneous Statement
In the applied-for mark, the term MODULUS sounds similar to the word module. Accordingly, there is a loose association between the terms, and the use of magnetic connectors to connect devices to one another as modules.


SIGNATURE(S)
Response Signature
Signature: /Michael A. Lisi/     Date: 06/08/2016
Signatory's Name: Michael A. Lisi
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 2482844091

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: 86800968
Internet Transmission Date: Wed Jun 08 15:56:59 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201606081556592
08362-86800968-550a3b2702d40f151fcdb5f5f
5d108ebbfe445a9a267717e3c8958c88b724a8bd
37-N/A-N/A-20160608153638608269