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. 88046628 RESIDEO(Standard Characters, see http://uspto.report/TM/88046628/mark.png) has been amended as follows:

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

REMARKS

Significance of the Wording

 

The Office Action inquired whether the term RESIDEO has any significance in Applicant’s trade or industry or as applied to Applicant’s goods and/or services, or if such wording is a “term of art” within Applicant’s industry.  Applicant responds that the term RESIDEO does not have any significance in Applicant’s trade or industry or as applied to Applicant’s goods and/or services, and that the term RESIDEO is not a “term of art” within Applicant’s industry. 

Applicant has entered this information in the Miscellaneous Statements field, since the TEAS form did not include this specific response option in the Significance of Wording category.

Identification of Goods and Services

 

The Office Action objected to the identification of goods and services as indefinite.  Applicant has now entered an amendment responsive to this objection.

 

The Office Action objected to the wording “home automation systems comprising wireless and wired controllers and controlled devices for lighting, window shades, HVAC, security, safety and other home monitoring and control applications” in Class 9.  This identification largely mirrors accepted terminology from the USPTO’s official identification manual.  (See the attached printout for the accepted terminology “home and office automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications.”)  Applicant therefore respectfully submits that this wording is sufficiently definite and requests that this objection be withdrawn.

 

 

With the above, Applicant respectfully submits that all questions are now answered and requests that this application be passed for publication.

 

 

EVIDENCE
Evidence in the nature of Printout from USPTO ID manual has been attached.
Original PDF file:
evi_20671224226-20190401173009922126_._RESIDEO_-_Attachment_for_Response__F2810219x96B9E_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Home automation systems comprising wireless and wired controllers and controlled devices for lighting, window shades, HVAC, security, safety and other home monitoring and control applications; security equipment sold individually, as components, or together as a system comprising one or more of the following: control panels, keypads, transceivers, transmitters, signal receivers, sirens, audio speakers; control panels; keypads; transceivers; transmitters; signal receivers; sirens; audio speakers; sensors and detectors for security, fire protection and home monitoring, namely, electronic magnetic contacts, electronic intrusion detectors, electronic glass break sensors, electronic motion sensors, smoke detectors, heat detectors, carbon monoxide detectors, electronic sensors that detect the movement of physical objects, temperature, environmental conditions; electronic magnetic contacts; electronic intrusion detectors; electronic glass break sensors; electronic motion sensors; smoke detectors; heat detectors; carbon monoxide detectors; electronic sensors that detect the movement of physical objects, temperature, and environmental conditions; electronic door locks; digital video cameras; digital video recorders; doorbells; safes; computer hardware for tracking people, objects and pets using GPS data on an electronic device; computer software for monitoring, controlling, and managing security, HVAC, fire, lighting, locks, physical objects, appliances and vehicles; thermostats; door chimes; electronic cable and wiring for use in security, fire, sound, voice and data appliances and industries and related software; software for transmitting human health vital sign information including blood pressure, oxygen saturation, blood sugar remotely to health care providers; software for managing home and office HVAC systems, security systems and home appliances. Optical and acoustic apparatus and instruments for the remote transmission and surveillance of homes
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Home automation systems comprising wireless and wired controllers and controlled devices for lighting, window shades, HVAC, security, safety and other home monitoring and control applications; security equipment sold individually, as components, or together as a system comprising one or more of the following: control panels, keypads, transceivers, transmitters, signal receivers, sirens, audio speakers; security equipment, namely, electronic control panels, keypads, transceivers, wireless security sensors, transmitters of electronic signals related to security and automation, receivers of security- and automation-related electronic signals, sirens and audio speakers, all for use with and controlling security and automation systems; control panels; electronic control panels; keypads; keypads for use with security and/or automation systems in residential and commercial applications; transceivers; transmitters; wireless security and automation sensors and detectors; signal receivers; transmitters of electronic signals related to security and automation; receivers of electronic signals; sirens; sensors and detectors for security, fire protection and home monitoring, namely, electronic magnetic contacts, electronic intrusion detectors, electronic glass break sensors, electronic motion sensors, smoke detectors, heat detectors, carbon monoxide detectors, electronic sensors that detect the movement of physical objects, temperature, environmental conditions; audio speakers; electronic magnetic contacts; sensors and detectors for security, fire protection and home monitoring, namely, electric and magnetic contacts, electronic intrusion detectors, electronic glass break sensors, electronic motion sensors, smoke detectors, heat detectors, carbon monoxide detectors, electronic sensors that detect the movement of physical objects, temperature, environmental conditions, in residential and commercial security and automation applications; electric and magnetic contacts; electronic intrusion detectors; electronic glass break sensors; electronic motion sensors; smoke detectors; heat detectors; carbon monoxide detectors; electronic sensors that detect the movement of physical objects, temperature, and environmental conditions; electronic door locks; digital video cameras; doorbells; digital video recorders; safes; electric door bells, electric door bells incorporating video and/or voice communications, and related software and services offerings; computer hardware for tracking people, objects and pets using GPS data on an electronic device; computer hardware for tracking people, objects, objects including vehicles, and pets using GPS data on an electronic device, and related software and services; computer software for monitoring, controlling, and managing security, HVAC, fire, lighting, locks, physical objects, appliances and vehicles; computer software for monitoring, controlling, and managing security systems, automation systems, HVAC systems, fire detection systems, lighting, locks, physical objects, appliances and vehicles; thermostats; door chimes; electronic door chimes; electronic cable and wiring for use in security, fire, sound, voice and data appliances and industries and related software; electronic cables for use in security, fire, sound, voice and data appliances and industries and related software; software for transmitting human health vital sign information including blood pressure, oxygen saturation, blood sugar remotely to health care providers; electronic cables for use in security, fire, sound, voice telecom, information technology, and related applications/industries and related software; software for managing home and office HVAC systems, security systems and home appliances. Optical and acoustic apparatus and instruments for the remote transmission and surveillance of homes; software for transmitting human health vital sign information including blood pressure, oxygen saturation, blood sugar, and related patient health data, remotely to health care providers or other authorized recipients; software for managing home and office HVAC systems, security systems and home appliances; optical and acoustic apparatus and instruments for the remote transmission and surveillance of homes, namely, remote motion and/or acoustic detectors, video cameras, and related supporting software and servicesClass 009 for Home automation systems comprising wireless and wired controllers and controlled devices for lighting, window shades, HVAC, security, safety and other home monitoring and control applications; security equipment, namely, electronic control panels, keypads, transceivers, wireless security sensors, transmitters of electronic signals related to security and automation, receivers of security- and automation-related electronic signals, sirens and audio speakers, all for use with and controlling security and automation systems; electronic control panels; keypads for use with security and/or automation systems in residential and commercial applications; transceivers; wireless security and automation sensors and detectors; transmitters of electronic signals related to security and automation; receivers of electronic signals; sirens; audio speakers; sensors and detectors for security, fire protection and home monitoring, namely, electric and magnetic contacts, electronic intrusion detectors, electronic glass break sensors, electronic motion sensors, smoke detectors, heat detectors, carbon monoxide detectors, electronic sensors that detect the movement of physical objects, temperature, environmental conditions, in residential and commercial security and automation applications; electric and magnetic contacts; electronic intrusion detectors; electronic glass break sensors; electronic motion sensors; smoke detectors; heat detectors; carbon monoxide detectors; electronic sensors that detect the movement of physical objects, temperature, and environmental conditions; electronic door locks; digital video cameras; digital video recorders; electric door bells, electric door bells incorporating video and/or voice communications, and related software and services offerings; computer hardware for tracking people, objects, objects including vehicles, and pets using GPS data on an electronic device, and related software and services; computer software for monitoring, controlling, and managing security systems, automation systems, HVAC systems, fire detection systems, lighting, locks, physical objects, appliances and vehicles; thermostats; electronic door chimes; electronic cables for use in security, fire, sound, voice and data appliances and industries and related software; electronic cables for use in security, fire, sound, voice telecom, information technology, and related applications/industries and related software; software for transmitting human health vital sign information including blood pressure, oxygen saturation, blood sugar, and related patient health data, remotely to health care providers or other authorized recipients; software for managing home and office HVAC systems, security systems and home appliances; optical and acoustic apparatus and instruments for the remote transmission and surveillance of homes, namely, remote motion and/or acoustic detectors, video cameras, and related supporting software and services
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Apparatus for lighting, heating, cooling and ventilating; air conditioners; water heaters; air purifiers; water purifiers; water heaters; air filtering installations; air dryers; regulating accessories for water or gas apparatus and pipes; safety accessories for water or gas apparatus or pipes; water purification installations; water purifying apparatus and machines; water heaters
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Apparatus for lighting, heating, cooling and ventilating; apparatus for lighting, heating, cooling and ventilating, namely, electronic lighting and appliance controllers, aquastats, humidistats, and other heating/cooling/ventilation-related sensing and control apparatus, electrically operated duct controllers, water- and air-quality detection and remediation apparatus, and supporting software/services; controllers used to manage the air conditioning and defrost process in air conditioners and heat pumps; integrated combustion and appliance controllers, gas valves, and combustion parts used in and with boilers, furnaces and water heaters; water purifiers; air conditioners; water heaters; water heaters; boiler controls; air dryers; furnace controls; air purifiers; safety accessories for water or gas apparatus or pipes; water purifiers, water purifying apparatus, water purification installations, water purifying apparatus and machines; water purification installations; air filtering installations; water purifying apparatus and machines; electric air dryers; water heaters; regulating accessories for water or gas apparatus and pipes; safety accessories for water or gas apparatus or pipes, including gas control valves, gas and water check valves, gas and water backflow prevention devices, ignition safety devices such as pilot igniter detection and control devices, and related apparatusClass 011 for Apparatus for lighting, heating, cooling and ventilating; apparatus for lighting, heating, cooling and ventilating, namely, electronic lighting and appliance controllers, aquastats, humidistats, and other heating/cooling/ventilation-related sensing and control apparatus, electrically operated duct controllers, water- and air-quality detection and remediation apparatus, and supporting software/services; controllers used to manage the air conditioning and defrost process in air conditioners and heat pumps; integrated combustion and appliance controllers, gas valves, and combustion parts used in and with boilers, furnaces and water heaters; air conditioners; water heaters; boiler controls; furnace controls; air purifiers; water purifiers, water purifying apparatus, water purification installations, water purifying apparatus and machines; air filtering installations; electric air dryers; regulating accessories for water or gas apparatus and pipes; safety accessories for water or gas apparatus or pipes, including gas control valves, gas and water check valves, gas and water backflow prevention devices, ignition safety devices such as pilot igniter detection and control devices, and related apparatus
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Electronic transmission of messages and data by means of wireless services and wired services through a global computer information network; transfer of information and user defined data to view, control, and manage alarm systems, fire detection systems, HVAC systems, home automation systems, video cameras, and vehicle, asset and people tracking systems
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electronic transmission of messages and data by means of wireless services and wired services through a global computer information network; transfer of information and user defined data to view, control, and manage alarm systems, fire detection systems, HVAC systems, home automation systems, video cameras, and vehicle, asset and people tracking systems; electronic transmission of information and user defined data to view, control, and manage alarm systems, fire detection systems, HVAC systems, home automation systems, video cameras, and vehicle, asset and people tracking systemsClass 038 for Electronic transmission of messages and data by means of wireless services and wired services through a global computer information network; electronic transmission of information and user defined data to view, control, and manage alarm systems, fire detection systems, HVAC systems, home automation systems, video cameras, and vehicle, asset and people tracking systems
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services; providing remote storage of user's electronic and digital files and making them available users through a global communications network; in-home patient health care monitoring services via a wireless or internet connection
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer services; providing remote storage of user's electronic and digital files and making them available users through a global communications network; computer services, namely, providing remote storage of user's electronic and digital files and making them available to the user through a global communications network; in-home patient health care monitoring services via a wireless or internet connection; providing remote electronic storage of digital files and making them available to users through a global communications networkClass 042 for Computer services; computer services, namely, providing remote storage of user's electronic and digital files and making them available to the user through a global communications network; providing remote electronic storage of digital files and making them available to users through a global communications network
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Mauritius application number MU/M/2018/26 filed 02/27/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The term RESIDEO does not have any significance in Applicant's trade or industry or as applied to Applicant's goods and/or services, and the term RESIDEO is not a "term of art" within Applicant's industry.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Nancy DiConza/     Date: 04/01/2019
Signatory's Name: Nancy DiConza
Signatory's Position: Attorney, New York State Bar Member

Signatory's Phone Number: 212-813-5900

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.

        
RAM Sale Number: 88046628
RAM Accounting Date: 04/02/2019
        
Serial Number: 88046628
Internet Transmission Date: Mon Apr 01 17:58:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201904011758349
28417-88046628-620616b54f401e142ef39f990
18196ca13d10ff85eb651ac65bea0d6274ae5da-
DA-5083-20190401173009922126