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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87117647 SYNCHRONY(Standard Characters, see http://uspto.report/TM/87117647/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 Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio
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.

In International Class 009, the mark was first used at least as early as 02/28/2018 and first used in commerce at least as early as 02/28/2018 .

Proposed: Class 009 for Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 02/28/2018 . and first used in commerce at least as early as 02/28/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of screenshots showing the software in use .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner has refused the specimen of use submitted for this application on the grounds that it is not acceptable as a display associated with downloadable software and appears to be mere advertising material. Applicant herewith submits a substitute specimen of use, that was in use as of the date of filing the Statement of Use, consisting of an actual image showing a screenshot of the software in actual use on a physical computer, and on which one can easily see appears the mark SYNCHRONY. This constitutes a screen printout of the actual program that shows the mark in the title bar, and also a launch screen showing the mark in an introductory message box, both of which are acceptable per TMEP §904.03(e), (i), (j). As a result, Applicant request the refusal on these grounds be overturned. The Examiner has also refused the specimen concluding that it does not show the applied-for mark in use in commerce because it displays the mark as TRACER SYNCHRONY rather than SYNCHRONY. This conclusion is a result of an overly strict application of TMEP §807.12. 807.12(d) clearly states that "[a]n applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen, i.e., the element performs a trademark function in and of itself." Here, SYNCHONY, on its own, presents a separate impression from other material on the specimen. It also is a substantially exact representation of the mark as it appears in the drawing. It appears in the identical form "SYNCHRONY" in the specimen as it does in the drawing. There are absolutely no differences. The fact that TRACER( R ) also appears next to SYNCHRONY is immaterial. TRACER is a house mark for Applicant, and often appears with its other trademarks. In this specimen, any consumer would clearly and immediately distinguish TRACER as a wholly separate mark given that it appears with its own registration symbol ( R ) and given that there is also a space between TRACER and SYNCHRONY. Further, SYNCHRONY appears sufficiently prominent in the specimen, regardless of the appearance of TRACER( R ). It is capitalized everywhere it appears even when it is amidst other text. See See In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010). In fact, the specimen submitted for the present application is nearly identical to that submitted for Applicant's ENSEMBLE trademark, Registration No. 5586692, which just registered a few months ago. See Exhibit A. This specimen was accepted without any refusal and even though TRACER( R ) also appears next to ENSEMBLE, because as discussed above, the specimen still shows a substantially exact representation of the mark. Given the foregoing, Applicant requests that the refusal be lifted and the Statement of Use accepted.

Original PDF file:
mis-17316717859-20190110180244652836_._ENSEMBLE_Specimen.pdf
Converted PDF file(s) ( 1 page)
Miscellaneous File1

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: /Carlynn Ferguson Davis/      Date: 01/10/2019
Signatory's Name: Carlynn Ferguson Davis
Signatory's Position: Attorney of record, Illinois State Bar Member
Signatory's Phone Number: 8478085500


Response Signature
Signature: /Carlynn Ferguson Davis/     Date: 01/10/2019
Signatory's Name: Carlynn Ferguson Davis
Signatory's Position: Attorney of record, IL State Bar Member

Signatory's Phone Number: 8478085500

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: 87117647
Internet Transmission Date: Thu Jan 10 18:09:33 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201901101809338
76648-87117647-6205839787b82ae3aa615394a
ccb02052b17a1ae9b4e7d016b4da7d9ad4cf1d89
62-N/A-N/A-20190110180244652836