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. 88275104 CONEXUS(Standard Characters, see http://uspto.report/TM/88275104/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

This is in response to the Office Action dated March 3, 2020.

SPECIMEN REFUSAL – CLASSES 38 AND 42

The examining attorney has refused registration of the mark in connection with the specimens submitted for Classes 38 and 42 and states that the specimens do not sufficiently associate the applied-for mark with the identified services. Applicant respectfully disagrees with the Class 38 and Class 42 refusal.

In support of its allegation of use of Applicant’s Mark in connection with “transmission of data over wireless protocol to offload aircraft data using aviation based modules and software” in Class 38 and “updating aviation module firmware and software used to offload aircraft data; integration of data collection and analysis computer hardware and software systems for collecting information regarding aircraft flight, maintenance, and operating information” in Class 42, Applicant submitted marketing material promoting its CONEXUS computing and communication devices.

“Because by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied.” TMEP § 1301.04 (citing In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992)). An acceptable service-mark specimen should show the applied-for mark used in a manner that demonstrates a direct association between the mark and the services. “Essentially, the mark must be shown ‘in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source. TMEP § 1301.04(f) (quoting In re DSM Pharm, Inc., 87 USPQ2d 1623, 1624 (TTAB 2008), citing In re JobDiva, Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (“To determine whether a mark is used in connection with the services…a key consideration is the perception of the user.”)).

Moreover, the acceptability of a specimen should be considered “based on the facts and evidence of record, and viewed in the context of the relevant commercial environment.” TMEP § 1301.04(f) (citing In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) (“We must base our determination of public perception of applicant’s mark on the manner of use of the mark in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record bearing on the question of what impact applicant’s use is likely to have on purchasers and potential purchasers.”))

In In re Metriplex, Inc., the Board found the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed “the mark as it appears on a computer terminal in the course of applicant’s rendering of the service,” noting that “purchasers and users of the service would recognize applicant’s mark, as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal.” Because services were rendered through the means of a tangible item, namely, a computer terminal, the specimens were found to be acceptable, as they showed use of the mark in the rendering or selling of applicant’s services.

Applicant’s specimens show Applicant’s Mark on the tangible item through which the applied-for Class 38 and 42 services are offered, as well as on marketing material that describes how the services offered under Applicant’s Mark, through the tangible device, are “primarily for data concentration” pulled from wireless platforms to provide Applicant’s customers with data management, analysis, and compilation services. Applicant’s specimen therefore clearly shows Applicant’s Mark used in direct connection with Applicant’s Class 38 and 42 services.

Applicant’s CONEXUS goods and services are offered under the same CONEXUS mark to airlines and entities within the airline industry. They market to sophisticated customers who recognize Applicant’s Mark, as it appears on the device, as a mark identifying the associated data transmission and collection services, which are part of the CONEXUS system, incorporating both the applied-for goods and the applied-for services.

As even more apparent than the acceptable specimens in the Metriplex case, Applicant’s specimens show acceptable use of Applicant’s Mark in connection with its Class 38 and Class 42 services.

Accordingly, Applicant requests that this refusal be withdrawn.

SPECIMEN REFUSAL – CLASS 9

The examining attorney has refused registration of the mark in connection with the specimens submitted for Class 9 and states that the specimen appears to consist of a digitally created or altered image or a mockup of a depiction of the mark on the goods and does not sufficiently show the applied-for mark as actually used in commerce in International Class 9.

As an initial matter, Applicant declares that the photographs submitted with the Statement of Use were in no way digitally created or altered and were taken of the goods as the goods are labeled and shipped in commerce.

SUBSTITUTE SPECIMEN – CLASS 9

In response, however, Applicant hereby submits a substitute specimen of a photograph showing the goods bearing the mark as used in connection with the goods in Class 9.

DECLARATION UNDER 37 C.F.R. §2.20

Applicant declares under 37 C.F.R. § 2.20 that the Class 9 substitute specimen was in use in commerce prior to expiration of the filing deadline for filing a statement of use.

REMARKS

Accordingly, in view of the above, it is believed that this application is now in condition for being approved for publication, and such favorable action is requested when this case is next reached for attention. If any questions remain, the Examining Attorney is invited to contact the undersigned at (913) 647-9050 to resolve the same. It is believed that no fees are due in connection with this application. If any such fees are deemed necessary, the undersigned authorizes that they be charged to Deposit Account No. 19-0522.

Respectfully submitted,

C. Blair Barbieri

Hovey Williams LLP

Attorneys for Applicant

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Aviation based hardware modules and associated software for gathering, condensing, and managing aircraft data including real-time and/or recorded data via wired or wireless connections using public and proprietary connections and protocol
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.

In International Class 009, the mark was first used at least as early as 06/20/2019 and first used in commerce at least as early as 12/04/2019.


Proposed:
Class 009 for Aviation based hardware modules and associated software for gathering, condensing, and managing aircraft data including real-time and/or recorded data via wired or wireless connections using public and proprietary connections and protocol

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 06/20/2019 . and first used in commerce at least as early as 12/04/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of an image showing the goods bearing the mark as used.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1

Applicant proposes to amend the following:

Current:
Class 038 for Transmission of data over wireless protocol to offload aircraft data using aviation based modules and 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.

In International Class 038, the mark was first used at least as early as 06/20/2019 and first used in commerce at least as early as 12/04/2019.


Proposed:
Class 038 for Transmission of data over wireless protocol to offload aircraft data using aviation based modules and software

Deleted Filing Basis: 1(b)
In International Class 038, the mark was first used at least as early as 06/20/2019 . and first used in commerce at least as early as 12/04/2019 .

Applicant proposes to amend the following:

Current:
Class 042 for Updating aviation module firmware and software used to offload aircraft data; Integration of data collection and analysis computer hardware and software systems for collecting information regarding aircraft flight, maintenance, and operating information
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.

In International Class 042, the mark was first used at least as early as 06/20/2019 and first used in commerce at least as early as 12/04/2019.


Proposed:
Class 042 for Updating aviation module firmware and software used to offload aircraft data; Integration of data collection and analysis computer hardware and software systems for collecting information regarding aircraft flight, maintenance, and operating information

Deleted Filing Basis: 1(b)
In International Class 042, the mark was first used at least as early as 06/20/2019 . and first used in commerce at least as early as 12/04/2019 .

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Appareo Systems, LLC, a limited liability company legally organized under the laws of North Dakota, having an address of
      1810 NDSU Research Circle North
      Fargo, North Dakota 58102
      United States

Proposed: Appareo Systems, LLC, a limited liability company legally organized under the laws of North Dakota, having an address of
      1810 NDSU Research Circle North
      Fargo, North Dakota 58102
      United States
      Email Address: XXXX
Correspondence Information (current):
      C. Blair Barbieri
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing.barbieri@hoveywilliams.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jmashburn@hoveywilliams.com

The docket/reference number is 53322/7775.
Correspondence Information (proposed):
      C. Blair Barbieri
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing.barbieri@hoveywilliams.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bbarbieri@hoveywilliams.com; jmashburn@hoveywilliams.com

The docket/reference number is 53322/7775.

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

SIGNATURE(S)
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: /C. Blair Barbieri/      Date: 04/10/2020
Signatory's Name: C. Blair Barbieri
Signatory's Position: Attorney of Record, MO and KS bar member
Signatory's Phone Number: 913-647-9050


Response Signature
Signature: /C. Blair Barbieri/     Date: 04/10/2020
Signatory's Name: C. Blair Barbieri
Signatory's Position: Attorney of Record, Missouri Bar member

Signatory's Phone Number: 9136479050

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:    C. Blair Barbieri
   HOVEY WILLIAMS LLP
   
   10801 Mastin Blvd., Suite 1000
   Overland Park, Kansas 66210
Mailing Address:    C. Blair Barbieri
   HOVEY WILLIAMS LLP
   10801 Mastin Blvd., Suite 1000
   Overland Park, Kansas 66210
        
Serial Number: 88275104
Internet Transmission Date: Fri Apr 10 14:15:39 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020041014153958
1226-88275104-7102fb819c3c11b3b42358ac67
be64ba2ff8b2a2848e4afba6cbc40a8659ee14-N
/A-N/A-20200410135149928055