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. 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 amended its identification of goods by limiting all of the goods for use in the field of home and business automation.  Accordingly, the goods listed in Applicant’s Application are sufficiently different from the goods and services listed in the cited applications and registrations.  Accordingly, the refusal to register based on a likelihood of confusion is obviated.  Applicant requests that its Application proceed to publication.

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 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 or wireless control system, connected to wired and wireless networks in buildings, 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, 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, Internet of Things (IoT) devices, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition devices; semiconductor devices and packages thereof; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, signal, occupancy, smoke detecting and inspection mirrors, cameras, 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: 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 or wireless control system, connected to wired and wireless networks in buildings, software applications to control wired and wireless networks in buildings including lighting components and electrical devices; 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, 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, Internet of Things (IoT) devices, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition devices; 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 and packages thereof; semiconductor devices; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, signal, occupancy, smoke detecting and inspection mirrors, cameras, open/close sensors, computer modules, smoke and fire sensors and smoke and fire alarms; 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.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.

SIGNATURE(S)
Response Signature
Signature: /Matthew L. Frisbee/     Date: 06/18/2019
Signatory's Name: Matthew L. Frisbee
Signatory's Position: Attorney for Applicant, New York Bar member

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: 88099744
Internet Transmission Date: Tue Jun 18 15:46:43 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201906181546431961
78-88099744-620b9b3c1a72c73e2d449be79038
39f9b59ca539e1c93c8971507b553b48fd849c-N
/A-N/A-20190618150523640160