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. 88034094 FIXT (Stylized and/or with Design, see http://uspto.report/TM/88034094/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: FIXT (Stylized and/or with Design, see http://uspto.report/TM/88034094/mark.png)
Proposed: FIXT (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of a series of straight lines which have rounded edges that form the logo which spells out the literal word FIXT.

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

Section 2(d) Refusal

The Examining Attorney has refused Applicant’s application for registration of the mark FIXT in stylized form for the goods of “downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or reminders,” in International Class 9, under Trademark Act Section 2(d), 15 U.S.C. §1052(d). 

In the Supplemental Office Action of November 30, 2018, a Section 2(d) rejection was made based upon U.S. Registration No. 5,563,379 for the mark FIXT for the services of “platform as a service (PAAS) featuring computer software for secure online access to a service allowing users to submit and process tickets to timely repair or replace mobile phones that are not working properly and providing device analytics to identify and track how, when and by whom a specific mobile phone repair is made; technical and customer support services, namely, troubleshooting in the nature of diagnosing problems in mobile phone devices; software as a service (SAAS) services featuring software for diagnosing technical problems in mobile phone devices; computer software development in the field of mobile applications,” in International Class 42; and “downloadable software that provides access to a secure online service to submit and process tickets to timely repair or replace mobile phones that are not working properly,” in International Class 9.

Additionally, in the Office Action of October 29, 2019, the Examining Attorney raised  a potential conflict with pending U.S. Application No. 87/259,535 for the mark FIXT and design for the services of  “providing temporary use of non-downloadable computer software for transmitting data between automotive service personnel and customers in connection with vehicle repairs and maintenances, namely, computer software for scheduling appointments, providing cost estimates, approving proposed repairs and services, providing discount offers and coupons, and providing maintenance reminders; Providing temporary use of non-downloadable computer software for customer relationship management (CRM) in the field of automotive repairs, maintenance and sale,” in International Class 42; and “mobile application software for use in connection with vehicle repairs and maintenance, namely, software for scheduling appointments, providing cost estimates, approving proposed repairs and services, providing maintenance reminders, providing discount offers and coupons, and maintaining and providing access to vehicle repair and maintenance records and histories; Computer software for use in connection with vehicle repairs and maintenance, namely, software for scheduling appointments, providing cost estimates, approving proposed repairs and services, providing maintenance reminders, providing discount offers and coupons, and maintaining and providing access to vehicle repair and maintenance records and histories,” in International Class 9.

The Examining Attorney had also raised a potential conflict U.S. Application No. 87/053,368 for the mark FIXT.  Applicant notes that U.S. Application No. 87/053,368 is now abandoned and should therefore no longer constitute a conflict or potential conflict with Applicant’s mark.  A printout of the TSDR status for this mark showing that it is now abandoned is attached.  

            Applicant respectfully submits that no likelihood of confusion exists between those active cited marks that would prevent registration of Applicant’s mark. 

            The Examining Attorney argues that the wording of the mark “FIXT” is identical to those of the cited registration and application and that in view of the relatedness of the goods or services there is a likelihood of confusion between the marks.  Applicant respectfully submits that when considering the factors under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) they do not support a rejection under Section 2(d). 

            Applicant submits that the services are non-competing, and not sufficiently related or similar to support a refusal under Section 2(d).  The Examining Attorney has contended that the application uses broad wording to describe the purposes of the software namely, repair and maintenance services, which the Examining Attorney argues presumably encompasses all goods and/or services of the type described, including the Registrant’s more narrow identification of goods and services, namely servicing mobile phone and mobile applications.

Applicant has amended the goods description to further define the purpose of the software.  Specifically, the goods description has been amended to “downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals in the fields of home and building renovation, maintenance and repair, home and building electrical repairs, maintenance and installation, plumbing services, maid and cleaning services, handyman services, painting services, landscaping and lawn care services, garage door maintenance, repair and installation, roofing installation and repair, pest control, swimming pool maintenance and cleaning, locksmithing, carpet cleaning, window washing, home entertainment system equipment installation, maintenance and repair, blind installation and repair, custom closet installation, pet care and grooming, and excluding mobile phone and vehicle and automotive related services, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or reminders.” 

Such goods are specifically directed toward those typically used by residential home or business owners that relate to the home and building repair, maintenance, etc.   These goods are non-competing with those of the cited marks.  Additionally, Applicant has amended the goods description to specifically exclude mobile phone and vehicle and automotive related services, to which U.S. Registration No. 5,563,379 and U.S. Application No. 87/259,535 goods and services are specifically directed to. 

            Furthermore, the term FIXT of the both the cited registration and application that the Examining Attorney relies upon is a suggestive and weak mark and thus is only entitled to a narrow scope of protection compared those marks that are arbitrary or coined.  See T.M.E.P. §1207.01(b)(ix).   Both the cited registration and application are related to repair services within specific fields, namely, mobile phones and vehicles or automobiles.  Thus, FIXT is suggestive of these repair services as it will likely be construed as being a variation of the term or terms “fix” or “fixed,” as it relates to such repairs.  Accordingly, the suggestive nature of the mark limits the scope of protection that the mark is entitled to.

            This is further supported by the coexistence of the cited registration and the cited application themselves.  Applicant has noted that U.S. Application No. 87/259,535 has been approved for publication even with the existence of U.S. Registration No. 5,563,379, which are each owned by different owners.  A printout of the TSDR status of Application No. 87/259,535 is attached showing that it has been approved for publication and is scheduled to be published on May 7, 2019.   The cited registered mark and the approved application coexist even though the prominent component of each mark is the same and the goods and services are no more similar to each other than Applicant’s goods are similar to those of the cited marks.  The only significant distinction is that they are each directed to the repair of different goods. 

Applicant respectfully submits that the amended services description that specifically directs Applicant’s goods related to home and building services, as now listed, is significantly different and readily distinguishable from the repair of mobile devices and vehicles or automobiles, which are now expressly excluded. 

Because of the differences in the goods and services and the weak nature of the marks, Applicant respectfully submits such that no likelihood of confusion exists between the marks that would present a bar to registration of Applicant’s mark. 

            For all of the above reasons, Applicant respectfully requests that reconsideration of the refusal to register Applicant’s mark be made and that the application be approved for publication. 

 

Specimen Refusal and Mark Drawing

Applicant has amended the application to change the filing basis to that of a Section 1(b) application based upon a bona fide intent to use the mark.  Accordingly, the refusal based upon the submitted specimen should now be withdrawn.

Additionally, Applicant is amending the description of the mark to no longer claim color as a feature of the mark.  A new black and white drawing of the mark is being submitted.  Applicant submits that this change does not constitute a material alteration of the mark since the commercial impression of the mark is not changed.  The addition, deletion, or amendment of color lettering in a word mark does not result in a material alteration of the mark.  See T.M.E.P. §807.14(e)ii

EVIDENCE
Evidence in the nature of TSDR status printouts for U.S. Application Nos. 87/053,368 and 87/259,535. has been attached.
Original PDF file:
evi_19861585-20190416154207355664_._TSDR_Record_for_87-053_368.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_19861585-20190416154207355664_._TSDR_Record_for_87-259_535__FIXT_and_Design.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or reminders
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2018 and first used in commerce at least as early as 06/01/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or reminders; downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals in the fields of home and building renovation, maintenance and repair, home and building electrical repairs, maintenance and installation, plumbing services, maid and cleaning services, handyman services, painting services, landscaping and lawn care services, garage door maintenance, repair and installation, roofing installation and repair, pest control, swimming pool maintenance and cleaning, locksmithing, carpet cleaning, window washing, home entertainment system equipment installation, maintenance and repair, blind installation and repair, custom closet installation, pet care and grooming, and excluding mobile phone and vehicle and automotive related services, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or remindersClass 009 for downloadable mobile applications for residential home owners or business owners to request repair and maintenance services from licensed and qualified service professionals in the fields of home and building renovation, maintenance and repair, home and building electrical repairs, maintenance and installation, plumbing services, maid and cleaning services, handyman services, painting services, landscaping and lawn care services, garage door maintenance, repair and installation, roofing installation and repair, pest control, swimming pool maintenance and cleaning, locksmithing, carpet cleaning, window washing, home entertainment system equipment installation, maintenance and repair, blind installation and repair, custom closet installation, pet care and grooming, and excluding mobile phone and vehicle and automotive related services, namely, software for scheduling appointments, providing estimates on job costs, and providing maintenance suggestions or reminders
Deleted Filing Basis: 1(a)
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)
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: /Grady K. Bergen/      Date: 04/16/2019
Signatory's Name: Grady K. Bergen
Signatory's Position: Attorney
Signatory's Phone Number: 214-528-1112


Response Signature
Signature: /Grady K. Bergen/     Date: 04/16/2019
Signatory's Name: Grady K. Bergen
Signatory's Position: Attorney

Signatory's Phone Number: 214-528-1112

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: 88034094
Internet Transmission Date: Tue Apr 16 17:07:02 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-201904161707029061
03-88034094-62043879fe359e8dd351e4066069
9108dc5eaeaf66f87b719439238f537557b2-N/A
-N/A-20190416170305947398