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. 88329358 XICO(Standard Characters, see http://uspto.report/TM/88329358/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 009 for Scientific apparatus; scientific instruments; Research apparatus; Research instruments; Optical apparatus; Optical instruments; Signalling apparatus; Signalling instruments; Life-saving apparatus; Life-saving instruments; Apparatus and instruments controlling electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; Apparatus and instruments for accumulating electricity; Apparatus and instruments for storing electricity; Electrical and electronic instruments for the transmission of data; Electrical and electronic instruments for the reception of data; Electrical and electronic instruments for logging data; Electrical and electronic instruments for processing data; Electrical and electronic instruments for storing data; Recorded media; Downloadable media; Computer software; Downloadable software; Mobile software applications; Data storage media; Calculating devices; Computers; Computer peripheral devices
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: Scientific apparatus; Apparatus and instruments controlling electricity as electric current; scientific instruments; Apparatus and instruments for storing electricity, namely, batteries, accumulators, capacitors; Research apparatus; Electrical and electronic instruments for processing data, namely, for processing lighting parameters data; Research instruments; Downloadable software for lighting configuration and lighting control; Optical apparatus; Computer peripheral devices.; Optical instruments; Signalling apparatus; Signalling instruments; Life-saving apparatus; Life-saving instruments; Apparatus and instruments controlling electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; Apparatus and instruments for accumulating electricity; Apparatus and instruments for storing electricity; Electrical and electronic instruments for the transmission of data; Electrical and electronic instruments for the reception of data; Electrical and electronic instruments for logging data; Electrical and electronic instruments for processing data; Electrical and electronic instruments for storing data; Recorded media; Downloadable media; Computer software; Downloadable software; Mobile software applications; Data storage media; Calculating devices; Computers; Computer peripheral devicesClass 009 for Apparatus and instruments controlling electricity as electric current; Apparatus and instruments for storing electricity, namely, batteries, accumulators, capacitors; Electrical and electronic instruments for processing data, namely, for processing lighting parameters data; Downloadable software for lighting configuration and lighting control; Computer peripheral devices.
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 Lighting; Lighting elements; Lighting apparatus; Lighting installations; Light fittings; Lighting panels; Strings of lights; LED light bulbs; LED modules; LED lighting fixtures; LED lighting systems; LED light machines; LED light strips
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: Lighting; Lighting installations; Lighting elements; Lighting elements as fixtures; Lighting apparatus; Ceiling light fittings; LED light bulbs; Light fittings; LED modules; Lighting panels; LED light machines.; Strings of lights; LED lighting fixtures; LED lighting systems; LED light machines; LED light stripsClass 011 for Lighting installations; Lighting elements as fixtures; Ceiling light fittings; LED light bulbs; LED modules; LED light 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 042 for Technological analysis services; Technological services and research relating thereto; Scientific research; Scientific research services in the field of lighting; Scientific services and design relating thereto; Scientific laboratory services; Industrial analysis; Industrial research services; Programming services; Design and development of computer hardware; Design and development of computer software; Updating and maintenance of software; Updating and maintenance of hardware; Graphic design; Software as a Service; Platform as a Service (PaaS); Data as a Service (DaaS); Hosting of computerised data, files, applications and information in the field of science and technology
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: Technological analysis services; Scientific research services in the field of lighting; Technological services and research relating thereto; Industrial research services in the field of optics, electrical engineering and industrial design; Scientific research; Computer programming services; Design and development of computer hardware; Scientific services and design relating thereto; Design, development, and maintenance of computer software; Scientific laboratory services; Software as a Service (SaaS) featuring software for lighting configuration and lighting control.; Industrial analysis; Industrial research services; Programming services; Design and development of computer software; Updating and maintenance of software; Updating and maintenance of hardware; Graphic design; Software as a Service; Platform as a Service (PaaS); Data as a Service (DaaS); Hosting of computerised data, files, applications and information in the field of science and technologyClass 042 for Scientific research services in the field of lighting; Industrial research services in the field of optics, electrical engineering and industrial design; Computer programming services; Design and development of computer hardware; Design, development, and maintenance of computer software; Software as a Service (SaaS) featuring software for lighting configuration and lighting control.
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 correspondence information: TEYEO HOLDINGS LLC. TEYEO HOLDINGS LLC of TEYEO HOLDINGS LLC, is located at

      93 REVERE STREET, UNIT 4
      BOSTON, Massachusetts 02114
      US

The email address is info@basck.com

The applicants proposed correspondence information: Fusion Optix, Inc. Fusion Optix, Inc of Fusion Optix, Inc., is located at

      17 Wheeling Ave
      17 Wheeling Ave
      Woburn, Massachusetts 01801
      United States
The docket/reference number is Xico-SCM.

The phone number is 7819950805104.

The email address is tim.kelly@fusionoptix.com; tim.kelly@fusionoptix.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to office action item "C. General Inquiry on Significance" the following is submitted: A. "XICO" has no meaning or significance in the industry in which goods and/or services are manufactured/provided and is not a "term of art" within the industry. B. "XICO" as identified in the present application does not refer to a geographic place or suggest association with a geographic place. The Wikipedia Disambiguation Page for "Xico" (see attached) references two cities in Mexico with the name "Xico" but these are not associated with use of the mark as identified in the present application. C. In response to the examiner's specific question "1. Does the wording have a foreign translation", the attached Wikipedia Disambiguation Page for "Xico" references the name of former Portuguese football player Francisco "Xico" Ferreira ( died 1986) and the use of "Xico" as a nickname for "Francisco" in Portuguese. The present application is associated with neither of these uses of "Xico"

Original PDF file:
mis-2603300554e0e00040fd300d3c64e056-20191122105947513995_._Wikipedia_Xico_Disambiguation_Page_11-22-2019.pdf
Converted PDF file(s) ( 1 page)
Miscellaneous File1

SIGNATURE(S)
Response Signature
Signature: /Timothy Kelly/     Date: 11/22/2019
Signatory's Name: Timothy Kelly
Signatory's Position: Intellectual Property Officer

Signatory's Phone Number: 781-995-0805 ext. 104

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    TEYEO HOLDINGS LLC
   TEYEO HOLDINGS LLC
   
   93 REVERE STREET, UNIT 4
   BOSTON, Massachusetts 02114
Mailing Address:    Fusion Optix, Inc
   Fusion Optix, Inc.
   17 Wheeling Ave
   17 Wheeling Ave
   Woburn, Massachusetts 01801
        
Serial Number: 88329358
Internet Transmission Date: Fri Nov 22 11:52:29 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20191122115229246710-88329358-
700fcfe7bb28c454938a7aeb073a1fc7facd42f4
4dffb82767f7756ef1e5c9ab2-N/A-N/A-201911
22105947513995