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. 88238958 SIMU(Standard Characters, see http://uspto.report/TM/88238958/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Control devices for machines, engines or motors; electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable); electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable); motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable)
Original Filing Basis:
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[ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Control devices for machines, engines or motors; Control devices for machines, engines or motors for operating doors, garage doors, gates, barriers, grills, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings; electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable); Electric openers and closers, namely, electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills, and retractable bollards; electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable); Electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards; motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable); Reduction gears being parts of machines, namely, motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollardsClass 007 for Control devices for machines, engines or motors for operating doors, garage doors, gates, barriers, grills, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings; Electric openers and closers, namely, electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills, and retractable bollards; Electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards; Reduction gears being parts of machines, namely, motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards
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 [ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184473087 registered 07/30/2018 with a renewal date of __________ and an expiration date of 07/30/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TO_d_p_t_SIMU.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Original PDF file:
FRU0-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TRADUCTION_TO_SIMU.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Original PDF file:
FRU0-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_Traduction_jur_e.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data regarding the automation and management of the home and home equipment; interfaces for home automation applications; electric or electronic apparatus for remote control of home automation systems for the equipment in the home and/or buildings, in particular via the Internet communication network, telecommunication networks, including mobile telephones, for the installation, configuration, control, management, monitoring, in particular from a computer or a mobile telephone, of home automation features and applications and/or shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; software enabling the tuning, automation and control of these electric, electronic and/or computer applications; servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage; modems for home automation systems; connectors to a computer or home automation network; telecommunication terminals for the management and automation of the home and home equipment; computer and communication transmitter and receiver apparatus for home automation; electronic docking stations and digital electronic tablets for the automation and management of the home and home equipment; digital terminals for tertiary and residential buildings; digital terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding; electronic handheld devices for the wireless receipt and/or transmission of data for the remote management and automation of the home and home equipment; presence sensors, wind sensors, interior light sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors for electrical equipment for controlling lighting or alarms or blinds or shutters or heating; smoke detectors; detectors; video telephones; thermostats; video surveillance cameras; sirens batteries, electric batteries, rechargeable batteries; luminous beacons for safety or warning; luminous signals (signs); electric or electronic apparatus and installations for security and access control; electronic keys; electric or electronic locks; remote-controlled electric locks
Original Filing Basis:
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[ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data regarding the automation and management of the home and home equipment; interfaces for home automation applications; electronic display and interfaces for home automation applications; electric or electronic apparatus for remote control of home automation systems for the equipment in the home and/or buildings, in particular via the Internet communication network, telecommunication networks, including mobile telephones, for the installation, configuration, control, management, monitoring, in particular from a computer or a mobile telephone, of home automation features and applications and/or shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; software enabling the tuning, automation and control of these electric, electronic and/or computer applications; software to enable the tuning, automation and control of electric, electronic and/or computer applications, namely shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage; communication servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage; modems for home automation systems; connectors to a computer or home automation network; telecommunication terminals for the management and automation of the home and home equipment; computer and communication transmitter and receiver apparatus for home automation; electronic docking stations and digital electronic tablets for the automation and management of the home and home equipment; electronic docking stations and digital electronic tablet computers for the automation and management of the home and home equipment; digital terminals for tertiary and residential buildings; digital computer terminals for tertiary and residential buildings; digital terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding; digital computer terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding; electronic handheld devices for the wireless receipt and/or transmission of data for the remote management and automation of the home and home equipment; presence sensors, wind sensors, interior light sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors for electrical equipment for controlling lighting or alarms or blinds or shutters or heating; smoke detectors; detectors; motion detectors; video telephones; thermostats; video surveillance cameras; sirens batteries, electric batteries, rechargeable batteries; sirens; batteries, electric batteries, rechargeable batteries; luminous signals (signs); luminous beacons for safety or warning; luminous signals being signs; electronic keys; electric or electronic apparatus and installations for security and access control; electronic keys being remote control; electric or electronic locks; remote-controlled electric locksClass 009 for Electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data regarding the automation and management of the home and home equipment; electronic display and interfaces for home automation applications; electric or electronic apparatus for remote control of home automation systems for the equipment in the home and/or buildings, in particular via the Internet communication network, telecommunication networks, including mobile telephones, for the installation, configuration, control, management, monitoring, in particular from a computer or a mobile telephone, of home automation features and applications and/or shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; software to enable the tuning, automation and control of electric, electronic and/or computer applications, namely shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; communication servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage; modems for home automation systems; connectors to a computer or home automation network; telecommunication terminals for the management and automation of the home and home equipment; computer and communication transmitter and receiver apparatus for home automation; electronic docking stations and digital electronic tablet computers for the automation and management of the home and home equipment; digital computer terminals for tertiary and residential buildings; digital computer terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding; electronic handheld devices for the wireless receipt and/or transmission of data for the remote management and automation of the home and home equipment; presence sensors, wind sensors, interior light sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors for electrical equipment for controlling lighting or alarms or blinds or shutters or heating; smoke detectors; motion detectors; video telephones; thermostats; video surveillance cameras; sirens; batteries, electric batteries, rechargeable batteries; luminous beacons for safety or warning; luminous signals being signs; electric or electronic apparatus and installations for security and access control; electronic keys being remote control; electric or electronic locks; remote-controlled electric locks
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 [ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184473087 registered 07/30/2018 with a renewal date of __________ and an expiration date of 07/30/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TO_d_p_t_SIMU.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Original PDF file:
FRU1-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TRADUCTION_TO_SIMU.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Original PDF file:
FRU1-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_Traduction_jur_e.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Arranging subscriptions to home automation databases; Arranging subscriptions to database servers relating to automation and management of the household and household equipment; Arranging subscriptions to assistance in the implementation of home automation goods; Registration and data processing, namely, data entry, information, systemization relating to automation and management of the household and household equipment; Computerized file management, in particular of image and sound files relating to automation and management of the household and household equipment; Compilation of data in computer databases relating to automation and management of the household and household equipment; Providing of business information and consultancy in the field of motorization of openings, automation and management of the household and household equipment
Original Filing Basis:
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[ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Arranging subscriptions to home automation databases; Arranging subscriptions to database servers relating to automation and management of the household and household equipment; Arranging subscriptions to assistance in the implementation of home automation goods; Registration and data processing, namely, data entry, information, systemization relating to automation and management of the household and household equipment; Registration and data processing, namely, data entry, and systemization of information into computer databases relating to automation and management of the household and household equipment; Computerized file management, in particular of image and sound files relating to automation and management of the household and household equipment; Compilation of data in computer databases relating to automation and management of the household and household equipment; Providing of business information and consultancy in the field of motorization of openings, automation and management of the household and household equipment; Providing of business information and business consultancy in the field of motorization of openings, automation and management of the household and household equipmentClass 035 for Arranging subscriptions to home automation databases; Arranging subscriptions to database servers relating to automation and management of the household and household equipment; Arranging subscriptions to assistance in the implementation of home automation goods; Registration and data processing, namely, data entry, and systemization of information into computer databases relating to automation and management of the household and household equipment; Computerized file management, in particular of image and sound files relating to automation and management of the household and household equipment; Compilation of data in computer databases relating to automation and management of the household and household equipment; Providing of business information and business consultancy in the field of motorization of openings, automation and management of the household and household equipment
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 [ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184473087 registered 07/30/2018 with a renewal date of __________ and an expiration date of 07/30/2018 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TO_d_p_t_SIMU.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Original PDF file:
FRU2-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TRADUCTION_TO_SIMU.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Original PDF file:
FRU2-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_Traduction_jur_e.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Providing access to computer sites and portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy; Transmission of information, messages and images with the aid of computers, via satellite, via telecommunications networks, including mobile telephones, via telematic networks and via internet communications networks, using radio communication gateways including 3G keys or gateways between communication protocols and/or other communication interfaces for apparatus and installations for the remote control of the automation and/or motorisation of shutters, blinds, windows, locks, doors, gates and other systems for access, lighting, ventilation, air conditioning, heating, control and management of systems for security, access control, surveillance, alarms and/or fire detection, and devices for managing electric standby and/or consumption of gas, electricity, heat or other kinds of energy; Facilitation of Internet chat for users; Telecommunications in the field of automation and management of the household and household equipment; Providing access wireless networks (including the Internet) or private or restricted-access networks (including intranets) in the field of automation and management of the household, agricultural buildings and household equipment; Providing of communication between computer terminals for automation and management of the household, agricultural buildings and household equipment; Rental of telecommunications apparatus and digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipment
Original Filing Basis:
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[ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing access to computer sites and portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy; Providing access to websites and online portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy; Transmission of information, messages and images with the aid of computers, via satellite, via telecommunications networks, including mobile telephones, via telematic networks and via internet communications networks, using radio communication gateways including 3G keys or gateways between communication protocols and/or other communication interfaces for apparatus and installations for the remote control of the automation and/or motorisation of shutters, blinds, windows, locks, doors, gates and other systems for access, lighting, ventilation, air conditioning, heating, control and management of systems for security, access control, surveillance, alarms and/or fire detection, and devices for managing electric standby and/or consumption of gas, electricity, heat or other kinds of energy; Facilitation of Internet chat for users; providing Internet chat rooms for users; Telecommunications in the field of automation and management of the household and household equipment; Rental of telecommunications equipment in the field of automation and management of the household and household equipment; Providing access wireless networks (including the Internet) or private or restricted-access networks (including intranets) in the field of automation and management of the household, agricultural buildings and household equipment; Providing access and assistance to telecommunication networks, namely, providing access to wireless networks including the Internet or private or restricted-access networks including intranets in the field of automation and management of the household, agricultural buildings and household equipment; Providing of communication between computer terminals for automation and management of the household, agricultural buildings and household equipment; Rental of telecommunications apparatus and digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of telecommunications apparatus and set-top boxes for use with televisions in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipmentClass 038 for Providing access to websites and online portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy ; Transmission of information, messages and images with the aid of computers, via satellite, via telecommunications networks, including mobile telephones, via telematic networks and via internet communications networks, using radio communication gateways including 3G keys or gateways between communication protocols and/or other communication interfaces for apparatus and installations for the remote control of the automation and/or motorisation of shutters, blinds, windows, locks, doors, gates and other systems for access, lighting, ventilation, air conditioning, heating, control and management of systems for security, access control, surveillance, alarms and/or fire detection, and devices for managing electric standby and/or consumption of gas, electricity, heat or other kinds of energy; providing Internet chat rooms for users; Rental of telecommunications equipment in the field of automation and management of the household and household equipment; Providing access and assistance to telecommunication networks, namely, providing access to wireless networks including the Internet or private or restricted-access networks including intranets in the field of automation and management of the household, agricultural buildings and household equipment; Providing of communication between computer terminals for automation and management of the household, agricultural buildings and household equipment; Rental of telecommunications apparatus and set-top boxes for use with televisions in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipment
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 [ France application number 4473087 filed 07/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184473087 registered 07/30/2018 with a renewal date of __________ and an expiration date of 07/30/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TO_d_p_t_SIMU.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Original PDF file:
FRU3-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_TRADUCTION_TO_SIMU.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Original PDF file:
FRU3-6323611269-132459159_._SPIIB_REP_444_MET_18L2164_Traduction_jur_e.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

The applicant's current attorney information: Jeffrey D. Larson. Jeffrey D. Larson of HOLLAND & HART LLP, is located at

      ATTENTION: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      US
The docket/reference number is 76294.0010.

The phone number is 303-245-2094.

The email address is docket@hollandhart.com

The applicants proposed attorney information: Jeffrey D. Larson. Other appointed attorneys are Scott S. Havlick, Andrea Anderson, Ester Martin, Andrew Roppel, H. Matthew Horlacher, Larry H. Tronco, Hope Hamilton, Kazuyo Morita, Madelon Lapidus, Amanda Marston, Catherine C. Miller, Amy Tindell, Dardoh Skinner, Rachel Carnaggio and all other attorneys at Holland & Hart LLP. Jeffrey D. Larson of HOLLAND & HART 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

      ATTENTION: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      United States
The docket/reference number is 76294.0010.

The phone number is 303-245-2094.

The email address is docket@hollandhart.com

Jeffrey D. Larson 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: JEFFREY D. LARSON. JEFFREY D. LARSON of HOLLAND & HART LLP, is located at

      ATTENTION: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      US
The docket/reference number is 76294.0010.

The phone number is 303-245-2094.

The email address is docket@hollandhart.com; gigrigoryan@hollandhart.com; aanderson@hollandhart.com; JDLarson@hollandhart.com

The applicants proposed correspondence information: Jeffrey D. Larson. Jeffrey D. Larson of HOLLAND & HART LLP, is located at

      ATTENTION: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      United States
The docket/reference number is 76294.0010.

The phone number is 303-245-2094.

The email address is docket@hollandhart.com; gigrigoryan@hollandhart.com; JDLarson@hollandhart.com; AAnderson@hollandhart.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant is prepared to delete "Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipment" if the Examining Attorney accepts "Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment" in Class 38. If "Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment" is not acceptable, Applicant request Examining Attorney leave both identifications and issue a second office action so Applicant can further specify these services.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Jeffrey D. Larson/      Date: 09/24/2019
Signatory's Name: Jeffrey D. Larson
Signatory's Position: Attorney of Record, Colorado Bar Member
Signatory's Phone Number: 303-245-2094


Response Signature
Signature: /Jeffrey D. Larson/     Date: 09/24/2019
Signatory's Name: Jeffrey D. Larson
Signatory's Position: Attorney of Record, Colorado Bar Member

Signatory's Phone Number: 303-245-2094

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:    JEFFREY D. LARSON
   HOLLAND & HART LLP
   ATTENTION: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
Mailing Address:    Jeffrey D. Larson
   HOLLAND & HART LLP
   ATTENTION: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
        
Serial Number: 88238958
Internet Transmission Date: Tue Sep 24 15:08:28 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019092415082850
6511-88238958-6102bf2d7baf8dea6019daf743
f325eb56971ffb1d27b11bf4a55b28ccb485a3f-
N/A-N/A-20190924135505945118