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. 88006614 SMARTPATCH(Standard Characters, see http://uspto.report/TM/88006614/mark.png) has been amended as follows:

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

Applicant notes that the cited pending registration is directed to battery packs, power stations, and the like.  It is believed that with the above amendment to the goods description, no confusion is likely even if the mark matures to a registration.

The examiner rejects the mark as being descriptive.  With the Office Action, the Examiner has included some Internet materials showing “smart devices.”  However, the material the Examiner cited did not make any mention of patches.  Attached hereto is a screen shot of a Google image search for “smart patch.”  This terminology is almost exclusively used for skin mounted medical sensors.  Within that sheet, there are two examples of something like clothing patches or stickers, and in both cases they are called smart patches because the word smart is printed on them. 

It is respectfully submitted that the applied for mark is merely suggestive of the goods now recited in the application, and it is suitable for the Principal Register.

EVIDENCE
Evidence in the nature of Google Search regarding the normal meaning of "smart patch" has been attached.
Original PDF file:
evi_104511714-20190409210209249109_._smart_patch_-_Google_Search.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Patches for attachment to articles of clothing that include Near Field Communications (NFC) devices for transmitting of information to a portable handheld phones and devices equipped with NFC readers

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Decorative patches for clothing
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: Decorative patches for clothing; Decorative patches for clothing, namely decorative apparel supplements for sewing, ironing, or otherwise applying to clothing containing Near Field Communication (NFC) devices for transmitting information for branding and marketing to portable handheld phones and devices equipped with NFC readersClass 025 for Decorative patches for clothing, namely decorative apparel supplements for sewing, ironing, or otherwise applying to clothing containing Near Field Communication (NFC) devices for transmitting information for branding and marketing to portable handheld phones and devices equipped with NFC readers
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: /Thomas Arno, Reg. No. 40490/     Date: 04/09/2019
Signatory's Name: Thomas Arno
Signatory's Position: Attorney of Record

Signatory's Phone Number: 858-987-4074

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: 88006614
Internet Transmission Date: Tue Apr 09 21:11:09 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20190409211109187
085-88006614-62089696ff59749942b5f220f96
98cf927322754dc9ffdcdab107cf2de69a-N/A-N
/A-20190409210209249109