TEAS Request Reconsideration after FOA

PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88099744 COYOTE(Standard Characters, see http://uspto.report/TM/88099744/mark.png) has been amended as follows:

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

Applicant has deleted the conflicting goods and requests that the likelihood of confusion refusal be withdrawn

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable mobile application software for controlling electric and ambient lighting, HVAC, climate control, presence detection and monitoring, power control and monitoring, security, safety, and other home monitoring and control applications; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, people, pets and things; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, pets and things; downloadable mobile applications software and firmware for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Artificial Intelligence, Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; thermostats that incorporate wireless connectivity; computer software for mobile devices, namely, software for programming and controlling the aforementioned thermostats; electronic devices, namely, kitchen thermometers, cooking thermometers, electrical switches, digital audio players, and wireless transmitters and receivers; wired and wireless control system, connected to wired and wireless networks in buildings for controlling electric and electronic devices, software applications to control wired and wireless networks in buildings including lighting components and electrical devices; wall switches and dimmers for electric lights, electrical receptacles, occupancy sensors, motion sensors, vacancy sensors, daylight sensors, lighting control panels, room controllers for controlling light dimmers, thermostats, control interface, and network modules; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, keypads and control panels for security systems and home automation devices, electronic door locks, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; electrical and electronic circuits, computers, wireless devices and equipment, and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; semiconductor devices; chip carriers, namely, semiconductor chip housings; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, emergency alarm signals, occupancy sensors, smoke detecting and inspection mirrors, cameras, window and door open/close sensors, computer modules, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; Indoor positioning and navigational systems, comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; electric and electronic sensors for motion, humidity, temperature, and light; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices, monitor sales and project future sales of IoT (Internet of Things)enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; dual independent electric socket control receptacle, namely, multimedia outlets with dual USB ports and backlight/nightlight; wireless enabled electrical plug outlets; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, lighting systems, garage door openers, electric gates, televisions, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; electrical wiring devices in the nature of sockets, receptacles, switches, controllers, and wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity; downloadable software for use in the data communication, oil and gas, power and utilities, security, electrical, electronic and lighting fields for providing information and resources in the data communication, oil and gas, power and utilities, security, electrical, and electronic fields; lighting controls; smart ceiling fan controllers; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation
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: Downloadable mobile application software for controlling electric and ambient lighting, HVAC, climate control, presence detection and monitoring, power control and monitoring, security, safety, and other home monitoring and control applications; Downloadable mobile application software for controlling electric and ambient lighting, climate control; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, people, pets and things; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of people and pets; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, pets and things; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, and pets; downloadable mobile applications software and firmware for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Artificial Intelligence, Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; downloadable software, firmware and software applications permitting users to remotely control lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions; thermostats that incorporate wireless connectivity; computer software for mobile devices, namely, software for programming and controlling the aforementioned thermostats; electronic devices, namely, kitchen thermometers, cooking thermometers, electrical switches, digital audio players, and wireless transmitters and receivers; wired and wireless control system, connected to wired and wireless networks in buildings for controlling electric and electronic devices, software applications to control wired and wireless networks in buildings including lighting components and electrical devices; wall switches and dimmers for electric lights, electrical receptacles, occupancy sensors, motion sensors, vacancy sensors, daylight sensors, lighting control panels, room controllers for controlling light dimmers, thermostats, control interface, and network modules; voice-activated and remotely-activated IP (Internet protocol) remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, keypads and control panels for security systems and home automation devices, electronic door locks, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; electrical and electronic circuits; electrical and electronic circuits, computers, wireless devices and equipment, and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; computers; wireless devices and wireless equipment and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; semiconductor devices; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, emergency alarm signals, occupancy sensors, smoke detecting and inspection mirrors, cameras, window and door open/close sensors, computer modules, smoke and fire sensors and smoke and fire alarms; chip carriers, namely, semiconductor chip housings; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, computer modules; Indoor positioning and navigational systems, comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; electric and electronic sensors for motion, humidity, temperature, and light; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; smart home and smart building dashboard comprised of computer hardware and software used to monitor sales and project future sales of IoT (Internet of Things) enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; video cameras; dual independent electric socket control receptacle, namely, multimedia outlets with dual USB ports and backlight/nightlight; wireless enabled electrical plug outlets; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices, monitor sales and project future sales of IoT (Internet of Things)enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, lighting systems, garage door openers, electric gates, and televisions; downloadable software for use in the data communication, oil and gas, power and utilities, security, electrical, electronic and lighting fields for providing information and resources in the data communication, oil and gas, power and utilities, security, electrical, and electronic fields; lighting controls; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, lighting systems, garage door openers, electric gates, televisions, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; smart ceiling fan controllers; electronic and wireless control panels for security and home automation systems; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; electrical wiring devices in the nature of sockets, receptacles, switches, controllers, and wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity; all of the foregoing for use in the field of home and building automationClass 009 for Downloadable mobile application software for controlling electric and ambient lighting, climate control; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of people and pets; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, and pets; downloadable mobile applications software and firmware for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable software, firmware and software applications permitting users to remotely control lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions; thermostats that incorporate wireless connectivity; computer software for mobile devices, namely, software for programming and controlling the aforementioned thermostats; electronic devices, namely, kitchen thermometers, cooking thermometers, electrical switches, digital audio players, and wireless transmitters and receivers; wall switches and dimmers for electric lights, electrical receptacles, occupancy sensors, motion sensors, vacancy sensors, daylight sensors, lighting control panels, room controllers for controlling light dimmers, thermostats, control interface, and network modules; voice-activated and remotely-activated IP (Internet protocol) remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; electrical and electronic circuits; computers; wireless devices and wireless equipment and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; semiconductor devices; chip carriers, namely, semiconductor chip housings; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, computer modules; electric and electronic sensors for motion, humidity, temperature, and light; smart home and smart building dashboard comprised of computer hardware and software used to monitor sales and project future sales of IoT (Internet of Things) enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; dual independent electric socket control receptacle, namely, multimedia outlets with dual USB ports and backlight/nightlight; wireless enabled electrical plug outlets; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, lighting systems, garage door openers, electric gates, and televisions; downloadable software for use in the data communication, oil and gas, power and utilities, security, electrical, electronic and lighting fields for providing information and resources in the data communication, oil and gas, power and utilities, security, electrical, and electronic fields; lighting controls; smart ceiling fan controllers; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      Peter Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): frisbee@leasonellis.com

The docket/reference number is 04458/311111.
Correspondence Information (proposed):
      Peter Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): frisbee@leasonellis.com

The docket/reference number is 04458/311111.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Matthew L. Frisbee/     Date: 06/03/2021
Signatory's Name: Matthew L. Frisbee
Signatory's Position: Attorney for Applicant, New York Bar member
Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Peter Sloane
   LEASON ELLIS LLP
   
   ONE BARKER AVENUE, FIFTH FLOOR
   WHITE PLAINS, New York 10601
Mailing Address:    Peter Sloane
   LEASON ELLIS LLP
   ONE BARKER AVENUE, FIFTH FLOOR
   WHITE PLAINS, New York 10601
        
Serial Number: 88099744
Internet Transmission Date: Thu Jun 03 15:12:04 ET 2021
TEAS Stamp: USPTO/RFR-XX.XX.XX.XX-202106031512042913
50-88099744-78046db2ce9f2332ab139e14caf5
e4aced444a9d982027e745366e9d1267df3ac7-N
/A-N/A-20210603142547880040