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. 87414818 PROGRESS LIGHTING (Stylized and/or with Design, see http://uspto.report/TM/87414818/mark.png) has been amended as follows:

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

AMENDMENT(S)

 

Please amend the description of goods as follows:

 

Class 9:  Illuminated exit signs, lighting controls and lighting control systems comprised primarily of lighting control apparatus and lighting control panels, electric door chime kits consisting primarily of electric door chimes, door chime housing and push button housing.

 

Class 11:  Lighting fixtures, ceiling fans, light bulbs, lamp reflectors, globes for lamps, recessed housing for lighting fixtures, lighting mounting frames, and mounting accessories, namely, wall brackets for lighting fixtures, mounting clips, ceiling gaskets, channels and rings for mounting lighting fixtures and ceiling fans.

 

Please also enter the following disclaimer:  No claim is made to the term “Lighting” apart from the mark as shown.

 

REMARKS

 

            This is a Response to the Office Action mailed July 14, 2017.

 

The description of goods has been amended pursuant to the Examining Attorney’s request and TMEP §1402.01.

 

In addition, a disclaimer of the term “Lighting” has been entered as requested by the Examining Attorney and TMEP §1213.

 

It is noted that the prior filed application Serial No.  87379077 identified by the Examining Attorney is still pending.  However, it is also noted that application Serial No.  87379077 has been refused based on Applicant’s prior registered marks.  It is therefore requested that Applicant’s application be approved for publication or, if necessary, suspended pending the disposition of application Serial No.  87379077.

 

Should the Examining Attorney have any questions, the Examining Attorney is invited to contact Applicant’s undersigned attorney.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Illuminated exit signs, lighting controls and lighting control systems, electric door chime kits consisting primarily of electric door chimes, door chime housing and push button housing
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: Illuminated exit signs, lighting controls and lighting control systems, electric door chime kits consisting primarily of electric door chimes, door chime housing and push button housing; Illuminated exit signs, lighting controls and lighting control systems comprised primarily of lighting control apparatus and lighting control panels, electric door chime kits consisting primarily of electric door chimes, door chime housing and push button housing.Class 009 for Illuminated exit signs, lighting controls and lighting control systems comprised primarily of lighting control apparatus and lighting control panels, electric door chime kits consisting primarily of electric door chimes, door chime housing and push button housing.
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 proposes to amend the following class of goods/services in the application:
Current: Class 011 for Lighting fixtures, ceiling fans, light bulbs, lamp reflectors, globes for lamps, recessed housing for lighting fixtures, lighting mounting frames, and mounting accessories including wall brackets for lighting fixtures, mounting clips, ceiling gaskets, channels and rings
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: Lighting fixtures, ceiling fans, light bulbs, lamp reflectors, globes for lamps, recessed housing for lighting fixtures, lighting mounting frames, and mounting accessories including wall brackets for lighting fixtures, mounting clips, ceiling gaskets, channels and rings; Lighting fixtures, ceiling fans, light bulbs, lamp reflectors, globes for lamps, recessed housing for lighting fixtures, lighting mounting frames, and mounting accessories, namely, wall brackets for lighting fixtures, mounting clips, ceiling gaskets, channels and rings for mounting lighting fixtures and ceiling fans.Class 011 for Lighting fixtures, ceiling fans, light bulbs, lamp reflectors, globes for lamps, recessed housing for lighting fixtures, lighting mounting frames, and mounting accessories, namely, wall brackets for lighting fixtures, mounting clips, ceiling gaskets, channels and rings for mounting lighting fixtures and ceiling fans.
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
Disclaimer
No claim is made to the exclusive right to use LIGHTING apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Roberta S. Bren/     Date: 01/09/2018
Signatory's Name: Roberta S. Bren
Signatory's Position: Attorney of Record, VA Bar Member

Signatory's Phone Number: 703-621-7140 ext. 148

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: 87414818
Internet Transmission Date: Tue Jan 09 13:07:38 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180109130738
237846-87414818-510e14f4071c42b97ec86358
aaf40d3e5ca7df0f3d5bef34da8b2ba63b5aea5f
0ac-N/A-N/A-20180109130019265676