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. 88223698 HAMILTON NG911(Standard Characters, see http://uspto.report/TM/88223698/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 text of Applicant's argument and Exhibits A-C has been attached.
Original PDF file:
evi_15115311-20190828150024514411_._OA_Response_-_HAMILTON_NG911.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_15115311-20190828150024514411_._HAMILTON_NG911_-_Exhibit_A.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_15115311-20190828150024514411_._HAMILTON_NG911_-_Exhibit_B.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_15115311-20190828150024514411_._HAMILTON_NG911_-_Exhibit_C.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telephone, text, and video messaging services for public safety and emergency communications; telecommunication services, namely, transmission of local and long distance voice, data, video, graphics and text messages via telephone, satellite or internet transmission; providing IP (Internet Protocol) network management services; telecommunications services, namely, routing calls to emergency services providers and transmitting civic location information or geo-coordinates
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: Telephone, text, and video messaging services for public safety and emergency communications; telecommunication services, namely, transmission of local and long distance voice, data, video, graphics and text messages via telephone, satellite or internet transmission; providing IP (Internet Protocol) network management services; providing managed network services, namely, providing access to an IP (Internet Protocol) network; telecommunications services, namely, routing calls to emergency services providers and transmitting civic location information or geo-coordinatesClass 038 for Telephone, text, and video messaging services for public safety and emergency communications; telecommunication services, namely, transmission of local and long distance voice, data, video, graphics and text messages via telephone, satellite or internet transmission; providing managed network services, namely, providing access to an IP (Internet Protocol) network; telecommunications services, namely, routing calls to emergency services providers and transmitting civic location information or geo-coordinates
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.

The applicant's current attorney information: Tricia L. Schulz. Tricia L. Schulz of FOLEY & LARDNER LLP, is located at

      SUITE 5000
      150 EAST GILMAN STREET
      MADISON, Wisconsin 53703
      US
The docket/reference number is 067628-0168.

The phone number is 608-257-5035 x4204.

The fax number is 608 258-4258.

The email address is ipdocketing@foley.com

The applicants proposed attorney information: Tricia L. Schulz. Other appointed attorneys are Julie A. McGinnis and all other attorneys of Foley & Lardner LLP. Tricia L. Schulz of FOLEY & LARDNER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 5000
      150 EAST GILMAN STREET
      MADISON, Wisconsin 53703
      United States
The docket/reference number is 067628-0168.

The phone number is 608-257-5035 x4204.

The fax number is 608 258-4258.

The email address is ipdocketing@foley.com

Tricia L. Schulz submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: TRICIA L. SCHULZ. TRICIA L. SCHULZ of FOLEY & LARDNER LLP, is located at

      SUITE 5000
      150 EAST GILMAN STREET
      MADISON, Wisconsin 53703
      US
The docket/reference number is 067628-0168.

The phone number is 608-257-5035 x4204.

The fax number is 608 258-4258.

The email address is ipdocketing@foley.com

The applicants proposed correspondence information: Tricia L. Schulz. Tricia L. Schulz of FOLEY & LARDNER LLP, is located at

      SUITE 5000
      150 EAST GILMAN STREET
      MADISON, Wisconsin 53703
      United States
The docket/reference number is 067628-0168.

The phone number is 608-257-5035 x4204.

The fax number is 608 258-4258.

The email address is ipdocketing@foley.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
HAMILTON has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3745242, 5566040, and 2071400


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: /Julie A. McGinnis/     Date: 08/28/2019
Signatory's Name: Julie A. McGinnis
Signatory's Position: Associate Attorney, Foley & Lardner LLP, Wisconsin bar member

Signatory's Phone Number: 4142975289

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.

Mailing Address:    TRICIA L. SCHULZ
   FOLEY & LARDNER LLP
   SUITE 5000
   150 EAST GILMAN STREET
   MADISON, Wisconsin 53703
Mailing Address:    Tricia L. Schulz
   FOLEY & LARDNER LLP
   SUITE 5000
   150 EAST GILMAN STREET
   MADISON, Wisconsin 53703
        
Serial Number: 88223698
Internet Transmission Date: Wed Aug 28 15:15:37 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.X-201908281515374296
41-88223698-610f66f393887c5472ca35766e82
0d1d9c9f7c2de56380c85c47d2afed9c52c3-N/A
-N/A-20190828150024514411