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. 88210968 BEYOND(Standard Characters, see http://uspto.report/TM/88210968/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of 1. Argument 2. Trane's Website - BEYOND 3. Trane's Brochure - BEYOND has been attached.
Original PDF file:
evi_1-17316717859-20190802143613477706_._Office_Action_Response__Final__02_Aug_2019_.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1-17316717859-20190802143613477706_._BEYOND_website_screen.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1-17316717859-20190802143613477706_._BGA_SS_BeyondGuardianAir_Main.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 007 for Electrical, electronic, mechanical and pneumatic controls for heating, ventilating, air condition and refrigeration equipment; computerized building automation and energy management systems comprising computers, computer software, electronic controllers and data communication lines for remotely controlling and for remotely monitoring, recording and reporting operating conditions of building heating, ventilating, air condition and refrigeration equipment; and parts thereof
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: Electrical, electronic, mechanical and pneumatic controls for heating, ventilating, air condition and refrigeration equipment; fluid coolers being parts for machines; computerized building automation and energy management systems comprising computers, computer software, electronic controllers and data communication lines for remotely controlling and for remotely monitoring, recording and reporting operating conditions of building heating, ventilating, air condition and refrigeration equipment; heat exchangers being part of machines; and parts thereofClass 007 for fluid coolers being parts for machines; heat exchangers being part of machines
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio ; computer software and hardware for use with smart grid applications; software for monitoring, controlling, and regulating building energy consumption based on utility supply and demand; energy utilization metering devices complete with related 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: Electrical, electronic, mechanical and pneumatic controls for heating, ventilating, air condition and refrigeration equipment; computerized building automation and energy management systems comprising computers, computer software, electronic controllers and data communication lines for remotely controlling and for remotely monitoring, recording and reporting operating conditions of building heating, ventilating, air condition and refrigeration equipment; and parts thereof; Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio; computer software and hardware for use with smart grid applications; software for monitoring, controlling, and regulating building energy consumption based on utility supply and demand; energy utilization metering devices complete with related softwareClass 009 for Electrical, electronic, mechanical and pneumatic controls for heating, ventilating, air condition and refrigeration equipment; computerized building automation and energy management systems comprising computers, computer software, electronic controllers and data communication lines for remotely controlling and for remotely monitoring, recording and reporting operating conditions of building heating, ventilating, air condition and refrigeration equipment; and parts thereof; Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio; computer software and hardware for use with smart grid applications; software for monitoring, controlling, and regulating building energy consumption based on utility supply and demand; energy utilization metering devices complete with related software
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Air conditioners; furnaces; heat pumps; fluid coolers; air coolers; water heaters; filters; electrostatic air filters; chillers; air delivery and handling units for cooling, heating, and ventilating; air induction units; humidifiers; ventilators; diffusers; blenders and convectors; terminal air units; variable air volume units; refrigeration machines and parts thereof namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers, fin and tube coils, convectors, ventilators, roof ventilators, unit heaters, gas fired unit heaters, furnaces, fans, centrifugal fans, propeller fans, humidifiers, grilles, and diffusers
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: Air conditioners; Furnaces for commercial use; furnaces; fluid coolers for commercial use; heat pumps; water heaters for commercial use; fluid coolers; chillers for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; air coolers; refrigeration machines and parts thereof for commercial use namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; water heaters; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations; filters; electrostatic air filters; chillers; air delivery and handling units for cooling, heating, and ventilating; air induction units; humidifiers; ventilators; diffusers; blenders and convectors; terminal air units; variable air volume units; refrigeration machines and parts thereof namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers, fin and tube coils, convectors, ventilators, roof ventilators, unit heaters, gas fired unit heaters, furnaces, fans, centrifugal fans, propeller fans, humidifiers, grilles, and diffusersClass 011 for Furnaces for commercial use; fluid coolers for commercial use; water heaters for commercial use; chillers for commercial use, namely, cooling systems comprising an evaporator, compressor, condenser, and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage; refrigeration machines and parts thereof for commercial use namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations;
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Installation, repair and maintenance of heating, ventilating and air conditioning products; Installation, maintenance and repair of building control and energy management systems for measuring, monitoring and controlling of heating, ventilating, and air conditioning apparatus; building energy assessment services for the purpose of determining operational improvements needed to improve energy use and efficiency of heating, ventilating, air conditioning and refrigeration equipment
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: Installation, repair and maintenance of heating, ventilating and air conditioning products; Installation, maintenance and repair of building control and energy management systems for measuring, monitoring and controlling of heating, ventilating, and air conditioning apparatus; building energy assessment services for the purpose of determining operational improvements needed to improve energy use and efficiency of heating, ventilating, air conditioning and refrigeration equipmentClass 037 for Installation, maintenance and repair of building control and energy management systems for measuring, monitoring and controlling of heating, ventilating, and air conditioning apparatus; building energy assessment services for the purpose of determining operational improvements needed to improve energy use and efficiency of heating, ventilating, air conditioning and refrigeration equipment
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: /John T.D. Bathke/     Date: 08/02/2019
Signatory's Name: John T.D. Bathke
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 8478085500

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: 88210968
Internet Transmission Date: Fri Aug 02 14:56:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201908021456004
77886-88210968-6201caef252ce93db975b9a42
7d8b6da10e393ca5ce0fb2dfec0a29249ab24f63
2-N/A-N/A-20190802143613477706