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. 88367694 SMARTDOCK(Standard Characters, see http://uspto.report/TM/88367694/mark.png) has been amended as follows:

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

Applicant disagrees with the Office's assessment regarding the descriptiveness of the mark, but hereby amends this application to the Supplemental Register in connection with its recently submitted Amendment to Allege Use. In response to the requirement for information, Applicant responds that, as its identification of services details, its software is used in conjunction with camera and sensor data to provide real-time and historical analytics for commercial buildings and vehicles, to include warehouses, loading docks and other such zones. The software interacts with cameras and other hardware, and uses live video and tracks live data, but does not "make adjustments that resemble those from human decisions" in the AI or machine-learning sense.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Online software-based service used for determining and displaying the detailed state of commercial building interiors and exteriors, using images, videos, and analysis of the same to identify vehicles, persons, equipment, cargo and movements thereof; Online software-based service providing location data and analysis used to determine presence and quantity of people, vehicles, equipment and/or cargo within loading zones, and provide alerts to responsible parties based on current state the same; Online software-based service used to display historical data around buildings and loading zones, namely, vehicle dwell times, interior activity, and image and video summaries of events
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.

In International Class 042, the mark was first used at least as early as 06/27/2019 and first used in commerce at least as early as 06/27/2019 .

Proposed:
Tracked Text Description: Online software-based service used for determining and displaying the detailed state of commercial building interiors and exteriors, using images, videos, and analysis of the same to identify vehicles, persons, equipment, cargo and movements thereof; Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for determining and displaying the detailed state of commercial building interiors and exteriors using images, videos, and analysis of the same to identify vehicles, persons, equipment, cargo and movements thereof; Online software-based service providing location data and analysis used to determine presence and quantity of people, vehicles, equipment and/or cargo within loading zones, and provide alerts to responsible parties based on current state the same; Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for providing location data and analysis that is used to determine the presence and quantity of people, vehicles, equipment and cargo within loading zones, and to provide alerts to responsible parties based on current state the same; Online software-based service used to display historical data around buildings and loading zones, namely, vehicle dwell times, interior activity, and image and video summaries of events; Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for displaying historical building and loading zone data, namely, vehicle dwell times, interior activity, and image and video summaries of eventsClass 042 for Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for determining and displaying the detailed state of commercial building interiors and exteriors using images, videos, and analysis of the same to identify vehicles, persons, equipment, cargo and movements thereof; Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for providing location data and analysis that is used to determine the presence and quantity of people, vehicles, equipment and cargo within loading zones, and to provide alerts to responsible parties based on current state the same; Online software-based service, namely, providing online non-downloadable software and software as a service (SAAS) services featuring software for displaying historical building and loading zone data, namely, vehicle dwell times, interior activity, and image and video summaries of events
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 06/27/2019 . and first used in commerce at least as early as 06/27/2019 .

The applicant's current attorney information: Peter B. Bromaghim. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 700
      12400 WILSHIRE BOULEVARD
      LOS ANGELES, California 90025
      US

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

The applicants proposed attorney information: Peter B. Bromaghim. Other appointed attorneys are M. Christopher Bolen, Melissa G. Ferrario, Anne C. Fleeson, William S. Fultz, Nicholas B. Hawkins, Jack B. Hicks, Jennifer Itzkoff, Sarah Anne Keefe, Laura A. Kees, Emily Scheible Whittaker, Randel S. Springer, Michael A. Tobin, Jeffrey S. Whittle. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 700
      12400 WILSHIRE BOULEVARD
      LOS ANGELES, California 90025
      United States
The docket/reference number is 209889.39.8.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

Peter B. Bromaghim 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: PETER B. BROMAGHIM. PETER B. BROMAGHIM of WOMBLE BOND DICKINSON (US) LLP, is located at

      SUITE 700
      12400 WILSHIRE BOULEVARD
      LOS ANGELES, California 90025
      US

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

The applicants proposed correspondence information: Peter B. Bromaghim. Peter B. Bromaghim of WOMBLE BOND DICKINSON (US) LLP, is located at

      SUITE 700
      12400 WILSHIRE BOULEVARD
      LOS ANGELES, California 90025
      United States
The docket/reference number is 209889.39.8.

The phone number is 424-369-2056.

The email address is tmdocketing@wbd-us.com

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Response Signature
Signature: /PeteBromaghim/     Date: 12/13/2019
Signatory's Name: Peter B. Bromaghim
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 4243692056

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:    PETER B. BROMAGHIM
   WOMBLE BOND DICKINSON (US) LLP
   SUITE 700
   12400 WILSHIRE BOULEVARD
   LOS ANGELES, California 90025
Mailing Address:    Peter B. Bromaghim
   WOMBLE BOND DICKINSON (US) LLP
   SUITE 700
   12400 WILSHIRE BOULEVARD
   LOS ANGELES, California 90025
        
Serial Number: 88367694
Internet Transmission Date: Fri Dec 13 16:27:22 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XX-2019121316272273045
5-88367694-700d9615ffabe534717847389184a
287986a58267cc62b114d55d16b5f434bb9f40-N
/A-N/A-20191213160739359466