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. 87704610 KEY SMART(Standard Characters, see http://uspto.report/TM/87704610/mark.png) has been amended as follows:

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

The Examining Attorney has rejected the mark KEY SMART, alleging that it is merely descriptive for Class 9 goods.  The Examiner references that SMART is often used to designate a programmed device and, of course, KEY relates to access or control.  Applicant is the owner of registration no. 4480717 for the same mark - KEY SMART covering metal key holders, such mark having been in use of over five years.  During that time the KEY SMART has achieved a level of fame and notoriety, and thousands of the product have been sold, both in the US and in other countries. 

Additionally, the cited mark and the prior pending application containing the word SMARTKEY have a narrow scope of protection due to their suggestive meaning. The mark KEY SMART is easily distinguishable, and except for the opposed application, KEY SMART or KEYSMART is unique on the Register for any type of goods.

It is also noted that the cited application for SMARTKEY SECURITY was only required to disclaim SECURITY and the mark SMARTKEY STARTER allowed to register with only a disclaimer of STARTER.  This is despite the fact that SMARTKEY has a much more well known descriptive meaning than KEY SMART, because SMART directly describes the type of KEY.

With regard to the other cited application, it is being opposed by Applicant and the parties are completing the settlement formalities.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Metal locks, metal deadbolts, metal padlocks; locks; locking devices
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: Metal locks, metal deadbolts, metal padlocks; locks; non electronic locking devices for automotive use, bicycle locks; locking devicesClass 006 for Metal locks, metal deadbolts, metal padlocks; non electronic locking devices for automotive use, bicycle locks
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 009 for Biometric identification apparatus; remote control starters for vehicles; remote controls for vehicle operations; downloadable software applications; electric locks
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: Biometric identification apparatus; remote control starters for vehicles; remote controls for vehicle operations; downloadable software applications; downloadable software applications for operating motor vehicles and motor vehicle functions; electric locksClass 009 for Biometric identification apparatus; remote control starters for vehicles; remote controls for vehicle operations; downloadable software applications for operating motor vehicles and motor vehicle functions; electric locks
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.

SIGNATURE(S)
Response Signature
Signature: /ja/     Date: 09/14/2018
Signatory's Name: Jill Anderfuren
Signatory's Position: Attorney of Record/Illinois Bar Member

Signatory's Phone Number: 3123451718

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: 87704610
Internet Transmission Date: Fri Sep 14 13:30:03 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2018091413300386
7108-87704610-610f7782626897cb236a311515
73cbe0bee96d9edabc62106dad9b92f6371d7a3-
N/A-N/A-20180914112551608909