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. 88409210 ITAG (Stylized and/or with Design, see http://uspto.report/TM/88409210/mark.png) has been amended as follows:

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

This responsive to the Examining Attorney's Office Action dated July 15, 2019. The Office Action has initially refused registration of the present mark ITAG [+ design] under Section 2(d) based on the prior marks in registrations, U.S. Reg. Nos. 4668852 ("the '852 Registration") and 3118579 ("the '579 Registration"). The Office Action also indicates a partial identification of goods requirement and a disclaimer requirement. The identification of goods is amended herein, and a Section 2(f) claim has been entered to address the disclaimer requirement. With regard to the Section 2(d) refusal, Applicant notes that the '852 Registration has now been canceled. The '579 Registration lists "providing consultancy relating to information technology" in Class 42. Applicant's goods/services in Classes 9 and 35 are entirely unrelated to IT consultancy or services. Specifically, Applicant's goods/services relate to encoded machine-readable labels and radio-frequency identification (RFID) tags, and electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets. Applicant's devices function to help identify and authenticate property using RFID and other machine-readable tags intended to replace old-fashioned hand-written labels and tags. Property owners can digitally write their contact information so the ITAG identification tags that can be scanned by mobile devices, while product manufacturers can incorporate the ITAG identification tags into their products to enhance authentication and build brand value. Applicant's devices are not "internet devices" and do not involve or relate to the services listed in the '579 Registration, nor would they be marketed in such a way that they would be encountered by the same persons in situations that would create an incorrect assumption that they originate from the same source. As the Examining Attorney is aware, in this event even if the marks are identical confusion is not likely. See, e.g., Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). In view of the above, Applicant respectfully requests that the present mark be moved forward to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Encoded machine-readable labels; encoded machine-readable labels sold as an integral component of industrial, commercial, and/or personal property assets; downloadable computer software for calculating, storing and/or reporting data of industrial, commercial and/or personal property assets; electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tags
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: Encoded machine-readable labels; encoded machine-readable labels, namely, labels carrying electronically-coded information; encoded machine-readable labels sold as an integral component of industrial, commercial, and/or personal property assets; encoded machine-readable labels, namely, labels carrying electronically-coded information sold as an integral component of industrial, commercial, and personal property assets; downloadable computer software for calculating, storing and/or reporting data of industrial, commercial and/or personal property assets; downloadable computer software for calculating, storing and reporting data of industrial, commercial and personal property assets; electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software for identifying, managing, locating, monitoring and tracking industrial, commercial, and personal property assets; downloadable computer software for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tagsClass 009 for encoded machine-readable labels, namely, labels carrying electronically-coded information; encoded machine-readable labels, namely, labels carrying electronically-coded information sold as an integral component of industrial, commercial, and personal property assets; downloadable computer software for calculating, storing and reporting data of industrial, commercial and personal property assets; downloadable computer software for identifying, managing, locating, monitoring and tracking industrial, commercial, and personal property assets; downloadable computer software in the nature of a mobile application for use with vehicle tire inspection systems; radio-frequency identification (RFID) tags
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 035 for Online retail electronics store services; retail store services featuring encoded machine-readable labels and radio-frequency identification (RFID) tags, and electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets
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: Online retail electronics store services; Online retail store services featuring encoded machine-readable labels and radio-frequency identification (RFID) tags, and electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets; retail store services featuring encoded machine-readable labels and radio-frequency identification (RFID) tags, and electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assetsClass 035 for Online retail store services featuring encoded machine-readable labels and radio-frequency identification (RFID) tags, and electronic devices for identifying, managing, locating, monitoring and/or tracking industrial, commercial, and/or personal property assets
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 attorney information: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      US
The docket/reference number is 704/49.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

The applicants proposed attorney information: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      United States
The docket/reference number is 704/49.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

Jeffrey J. Schwartz 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 J. SCHWARTZ. JEFFREY J. SCHWARTZ of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      US
The docket/reference number is 704/49.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

The applicants proposed correspondence information: Jeffrey J. Schwartz. Jeffrey J. Schwartz of SCHWARTZ LAW FIRM, P.C., is located at

      6100 FAIRVIEW ROAD, SUITE 1135
      CHARLOTTE, North Carolina 28210
      United States
The docket/reference number is 704/49.

The phone number is 704-552-1889.

The email address is jjs@schwartz-iplaw.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
ITAG has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4860168, 4872115


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: /jjs/      Date: 01/15/2020
Signatory's Name: Jeffrey J. Schwartz
Signatory's Position: Attorney
Signatory's Phone Number: 7045521889


Response Signature
Signature: /jjs/     Date: 01/15/2020
Signatory's Name: Jeffrey J. Schwartz
Signatory's Position: Attorney

Signatory's Phone Number: 7045521889

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 J. SCHWARTZ
   SCHWARTZ LAW FIRM, P.C.
   
   6100 FAIRVIEW ROAD, SUITE 1135
   CHARLOTTE, North Carolina 28210
Mailing Address:    Jeffrey J. Schwartz
   SCHWARTZ LAW FIRM, P.C.
   6100 FAIRVIEW ROAD, SUITE 1135
   CHARLOTTE, North Carolina 28210
        
Serial Number: 88409210
Internet Transmission Date: Wed Jan 15 12:17:58 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020011512175892
6702-88409210-700d6f1b8ae212a3f82e1dc9a6
ad351df04319df04f401abc2541adae11d634-N/
A-N/A-20200115114352791840