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. 86890338 VIVINT.SMARTHOME(Standard Characters, see http://uspto.report/TM/86890338/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Home automation systems; home security systems; control panels for security and home automation systems; Energy management systems comprising energy meters for tracking and monitoring energy usage and controls for limiting energy usage for small appliances; Climate control systems comprising digital thermostats; Lighting systems comprising lighting controls for limiting energy usage of lights; Building control systems comprising remote controlled devices for managing energy usage for heating, cooling, lights and small appliance; Fire and burglar alarms for residential and commercial buildings; gas alarms, namely, carbon monoxide detectors; emergency alarms, namely, emergency evacuation devices, namely, fire alarm control panels, smoke detectors; Trouble alarms for residential and commercial buildings, namely, sound alarms, motion detectors for perimeters, doors and windows, panic pendant and water sensors; Lighting systems, namely, lighting controls; Energy management systems, namely, electric controls for monitoring and adjusting energy usage; Video cameras; Video systems consisting of video cameras, monitors, recorders and video transmission apparatus; automation lock systems comprising electronic controls for monitoring and controlling electronic locking mechanisms; home and office HVAC automation systems comprising wireless and wired controllers, controlled devices, software and electronic control devices for monitoring and controlling home and office heating and cooling operations
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 automation systems; Home automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home monitoring and control applications; home security systems; home security systems comprising entry door touch pads, doorbell video, video recording, glass break detector, motion detector, security alarms, smoke detector, door and window sensors garage door control; control panels for security and home automation systems; electronic and wireless control panels for security and home automation systems; Energy management systems comprising energy meters for tracking and monitoring energy usage and controls for limiting energy usage for small appliances; Climate control systems comprising digital thermostats; Lighting systems comprising lighting controls for limiting energy usage of lights; Building control systems comprising remote controlled devices for managing energy usage for heating, cooling, lights and small appliance; Building control systems comprising remote controlled electronic and wireless controllers for managing energy usage for heating, cooling, lights and small appliance; Fire and burglar alarms for residential and commercial buildings; gas alarms, namely, carbon monoxide detectors; emergency alarms, namely, emergency evacuation devices, namely, fire alarm control panels, smoke detectors; emergency alarms, namely, emergency evacuation devices in the nature of fire alarm control panels and smoke detectors; Trouble alarms for residential and commercial buildings, namely, sound alarms, motion detectors for perimeters, doors and windows, panic pendant and water sensors; Trouble alarms for residential and commercial buildings, namely, sound alarms, motion detectors for perimeters, doors and windows, panic buttons incorporated into a pendant for safety alert purposes and sensors for water flooding; Lighting systems, namely, lighting controls; Energy management systems, namely, electric controls for monitoring and adjusting energy usage; Video cameras; Video systems consisting of video cameras, monitors, recorders and video transmission apparatus; Video systems consisting of video cameras, video monitors, video recorders and video transmission apparatus; automation lock systems comprising electronic controls for monitoring and controlling electronic locking mechanisms; home and office HVAC automation systems comprising wireless and wired controllers, controlled devices, software and electronic control devices for monitoring and controlling home and office heating and cooling operationsClass 009 for Home automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home monitoring and control applications; home security systems comprising entry door touch pads, doorbell video, video recording, glass break detector, motion detector, security alarms, smoke detector, door and window sensors garage door control; electronic and wireless control panels for security and home automation systems; Energy management systems comprising energy meters for tracking and monitoring energy usage and controls for limiting energy usage for small appliances; Climate control systems comprising digital thermostats; Lighting systems comprising lighting controls for limiting energy usage of lights; Building control systems comprising remote controlled electronic and wireless controllers for managing energy usage for heating, cooling, lights and small appliance; Fire and burglar alarms for residential and commercial buildings; gas alarms, namely, carbon monoxide detectors; emergency alarms, namely, emergency evacuation devices in the nature of fire alarm control panels and smoke detectors; Trouble alarms for residential and commercial buildings, namely, sound alarms, motion detectors for perimeters, doors and windows, panic buttons incorporated into a pendant for safety alert purposes and sensors for water flooding; Lighting systems, namely, lighting controls; Energy management systems, namely, electric controls for monitoring and adjusting energy usage; Video cameras; Video systems consisting of video cameras, video monitors, video recorders and video transmission apparatus; automation lock systems comprising electronic controls for monitoring and controlling electronic locking mechanisms; home and office HVAC automation systems comprising wireless and wired controllers, controlled devices, software and electronic control devices for monitoring and controlling home and office heating and cooling operations
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
Miscellaneous Statement
In the Office Action issued May 13, 2016, the Examining Attorney stated insufficient fees were submitted for the number of classes identified. The Examining Attorney also stated the identification of goods for Class 09 is indefinite and must be clarified. Applicant proposes the following amended identification of goods for Class 09: Home automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home monitoring and control applications; home security systems comprising entry door touch pads, doorbell video, video recording, glass break detector, motion detector, security alarms, smoke detector, door and window sensors garage door control; electronic and wireless control panels for security and home automation systems; Energy management systems comprising energy meters for tracking and monitoring energy usage and controls for limiting energy usage for small appliances; Climate control systems comprising digital thermostats; Lighting systems comprising lighting controls for limiting energy usage of lights; Building control systems comprising remote controlled electronic and wireless controllers for managing energy usage for heating, cooling, lights and small appliance; Fire and burglar alarms for residential and commercial buildings; gas alarms, namely, carbon monoxide detectors; emergency alarms, namely, emergency evacuation devices in the nature of fire alarm control panels and smoke detectors; Trouble alarms for residential and commercial buildings, namely, sound alarms, motion detectors for perimeters, doors and windows, panic buttons incorporated into a pendant for safety alert purposes and sensors for water flooding; Lighting systems, namely, lighting controls; Energy management systems, namely, electric controls for monitoring and adjusting energy usage; Video cameras; Video systems consisting of video cameras, video monitors, video recorders and video transmission apparatus; automation lock systems comprising electronic controls for monitoring and controlling electronic locking mechanisms; home and office HVAC automation systems comprising wireless and wired controllers, controlled devices, software and electronic control devices for monitoring and controlling home and office heating and cooling operations Applicant hereby submits fees for the four insufficient identified class. In view of the foregoing remarks, Applicant respectfully asserts that its VIVINT.SMARTHOME mark is entitled to allowance and requests that it be promptly allowed for publication. If the Examining Attorney requires any changes to the application that could be made by Examiner's Amendment, Applicant respectfully requests that he telephone the undersigned attorney at: (801) 533- 9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this response to Deposit Account No. 23-3178.


FEE(S)
Fee(s) in the amount of $1100 is being submitted.

SIGNATURE(S)
Response Signature
Signature: /John C. Stringham, 40831/     Date: 11/02/2016
Signatory's Name: John C. Stringham
Signatory's Position: Attorney of record, Utah bar member

Signatory's Phone Number: 801-533-9800

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: 86890338
RAM Accounting Date: 11/03/2016
        
Serial Number: 86890338
Internet Transmission Date: Wed Nov 02 14:11:44 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201611021411441
23808-86890338-570da169b452570849ac0cf55
6cfe4be1cb5487e05714945ea2f0bd6d37ed73ac
-CC-436-20161102140943430217