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. 88366468 SOS (Stylized and/or with Design, see http://uspto.report/TM/88366468/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: SOS (Stylized and/or with Design, see http://uspto.report/TM/88366468/mark.png)
Proposed: SOS (Stylized and/or with Design, see mark)
The color(s) The colors black, blue, yellow, green, and aqua are claimed as a feature of the mark. is/are claimed as a feature of the mark.
The mark consists of Blue letter "S' followed by a quintuple vertically sectioned letter "O" with the lower section blue, the second to lowest section transitioning blue to green, the center section green, the fourth section from bottom aqua, and the top section transitioning aqua to yellow, followed by the blue letter "S".

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

The present mark is used in conjunction with outdoor equipment and equipment monitoring. As the recently amended description notes, the present mark is sold by Simplified Outdoors Solutions with reference to outdoor equipment. The cited registration 5756237 is sold for home and indoor security systems. These systems are sold directly to home owners. In contrast, products associated with the present mark are sold to gardening and maintenance companies in conformance with their work requirements. Further, the products and systems sold under both the registered mark and the present mark are of a high value, leading consumers to exercise great care before investing in the product(s). Further, the marks are dissimilar in appearance. While the present mark demonstrates an array of colors, the cited registration is clearly differentiated by the outline box and statement of service since 1934. Customers will be overwhelmingly influenced by the claim of authenticity and long-service, and ficus on this portion of the mark. Registrant's mark is present on in home appliances, and is not similarly displayed to garden maintenance staff on electrical panels as are those of the present Applicant, Simplified Outdoor Solutions.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric control panels; Electrical distribution systems, namely, power distribution panels; Lighting control panels; Computer hardware for managing sensor data, coupled equipment, processing, transmission and display of command controls and schedules; Electric motor control units for swimming pool, spa, water park and fountain pumps; Electrical controls for irrigation sprinkler systems; Power access port for use with electrical control panels for connecting multiple data and electrical devices; User interfaces, namely, electrical control panel, switches, transformer, transmitters, probes, sensors, processor, touchscreen, and web software for electrotechnical and electronic devices; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, remote metering and sensor systems, energy and utility systems, security systems, lighting systems, pool systems, irrigation systems
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/17/2018 and first used in commerce at least as early as 12/10/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Electric control panels; Outdoor electric control panels; Electrical distribution systems, namely, power distribution panels; Lighting control panels; Outdoor lighting control panels; Computer hardware for managing sensor data, coupled equipment, processing, transmission and display of command controls and schedules; Computer hardware for managing sensor data, coupled equipment, processing, transmission and display of command controls and schedules for outdoor gardens; Electric motor control units for swimming pool, spa, water park and fountain pumps; Electric motor control units for outdoor swimming pool, spa, water park and fountain pumps; Electrical controls for irrigation sprinkler systems; Power access port for use with electrical control panels for connecting multiple data and electrical devices; Power access port for use with electrical control panels for connecting multiple data and electrical devices in a garden; User interfaces, namely, electrical control panel, switches, transformer, transmitters, probes, sensors, processor, touchscreen, and web software for electrotechnical and electronic devices; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, remote metering and sensor systems, energy and utility systems, security systems, lighting systems, pool systems, irrigation systems in the outdoors.; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, remote metering and sensor systems, energy and utility systems, security systems, lighting systems, pool systems, irrigation systemsClass 009 for Outdoor electric control panels; Electrical distribution systems, namely, power distribution panels; Outdoor lighting control panels; Computer hardware for managing sensor data, coupled equipment, processing, transmission and display of command controls and schedules for outdoor gardens; Electric motor control units for outdoor swimming pool, spa, water park and fountain pumps; Electrical controls for irrigation sprinkler systems; Power access port for use with electrical control panels for connecting multiple data and electrical devices in a garden; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, remote metering and sensor systems, energy and utility systems, security systems, lighting systems, pool systems, irrigation systems in the outdoors.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/17/2018 and first used in commerce at least as early as 12/10/2018 , and is now in use in such commerce.
The applicant's current attorney information: Matthew L. Bycer. Matthew L. Bycer of Bycer Law, PLC, is located at

      7220 N. 16th St., Suite H
      PHOENIX, Arizona 85020-5253
      US
The docket/reference number is 9080-TM-4.

The phone number is 602-944-2277.

The email address is matt@bycerlaw.com

The applicants proposed attorney information: Matthew L. Bycer. Matthew L. Bycer of Bycer Law, PLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      7220 N. 16th St., Suite H
      PHOENIX, Arizona 85020-5253
      United States
The docket/reference number is 9080-TM-4.

The phone number is 602-944-2277.

The email address is matt@bycerlaw.com

Matthew L. Bycer 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: MATTHEW L. BYCER. MATTHEW L. BYCER of Bycer Law, PLC, is located at

      7220 N. 16th St., Suite H
      PHOENIX, Arizona 85020-5253
      US
The docket/reference number is 9080-TM-4.

The phone number is 6029442277.

The email address is matt@bycerlaw.com; Kathi@vonHellensLaw.com

The applicants proposed correspondence information: Matthew L. Bycer. Matthew L. Bycer of Bycer Law, PLC, is located at

      7220 N. 16th St., Suite H
      PHOENIX, Arizona 85020-5253
      United States
The docket/reference number is 9080-TM-4.

The phone number is 602-944-2277.

The email address is matt@bycerlaw.com; kathi@bycerlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Initial mark was a computer screen capture (with background highlights. As used, the present mark sample shows how mark looks on a printed label (as is used with the present mark). The marks are substantially similar.


SIGNATURE(S)
Response Signature
Signature: /Matthew L. Bycer/     Date: 12/17/2019
Signatory's Name: Matthew L. Bycer
Signatory's Position: Attorney

Signatory's Phone Number: 6029442277

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:    MATTHEW L. BYCER
   Bycer Law, PLC
   
   7220 N. 16th St., Suite H
   PHOENIX, Arizona 85020-5253
Mailing Address:    Matthew L. Bycer
   Bycer Law, PLC
   7220 N. 16th St., Suite H
   PHOENIX, Arizona 85020-5253
        
Serial Number: 88366468
Internet Transmission Date: Tue Dec 17 21:06:25 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019121721062545
7107-88366468-700b32973608e7dfa1dd51abe6
a9538fccad92aea2b29948a6a4caa68d261904e-
N/A-N/A-20191217205324489271