TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88472509 ECONOLITE (Stylized and/or with Design, see http://uspto.report/TM/88472509/mark.png) has been amended as follows:

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

In the Office Action, the Examining Attorney requested amendments to the goods in Class 9 and the services in Class 37.  Moreover, the Examining Attorney indicated that some of the goods and services needed to be reclassified.  Accordingly, Applicant has amended the goods and services as suggested by the Examining Attorney and in accordance with the USPTO’s Acceptable Identification of Goods and Services Manual.  Applicant notes that the same dates of use and specimens of use previously submitted apply to the new classes.  Thus, neither a new declaration nor additional specimens of use are required.

 

Applicant submits it has responded to all outstanding issues raised in the Office Action.  The Examining Attorney is encouraged to contact the undersigned if the Examining Attorney has any questions or required any additional information.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for TRAFFIC CONTROL EQUIPMENT, NAMELY, ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND ACTUATED AND PRETIMED TRAFFIC SIGNAL CONTROLLERS; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE SOLD AS A UNIT FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; VEHICLE AND BICYCLE DETECTION SOFTWARE AND EQUIPMENT IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS, SOLD AS A UNIT, COMPRISING WIRELESS COMMUNICATION DEVICES FOR DATA OR IMAGE TRANSMISSION, ELECTRIC OR ELECTRONIC SENSORS, AND OPERATING SYSTEM AND APPLICATION SOFTWARE BOTH IN THE NATURE OF RECORDED AND DOWNLOADABLE COMPUTER OPERATING PROGRAM TO DETECT VEHICLE AND BICYCLE PRESENCE AND MOVEMENT; AND CONTROL CABINETS SPECIFICALLY ADAPTED FOR VEHICLE TRAFFIC CONTROL EQUIPMENT, NAMELY, TRAFFIC SIGNAL CONTROLLERS
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: TRAFFIC CONTROL EQUIPMENT, NAMELY, ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND ACTUATED AND PRETIMED TRAFFIC SIGNAL CONTROLLERS; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC, NAMELY, SYSTEMS COMPRISING ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS, ACTUATED AND PRETIMED TRAFFIC SIGNAL CONTROLLERS, AND RECORDED MOBILE OPERATING SYSTEM SOFTWARE; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE SOLD AS A UNIT FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; AND CONTROL CABINETS SPECIFICALLY ADAPTED FOR VEHICLE TRAFFIC CONTROL EQUIPMENT, NAMELY, TRAFFIC SIGNAL CONTROLLERS; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF COMPUTER HARDWARE AND RECORDED SOFTWARE, SOLD AS A UNIT, FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE, SOLD AS A UNIT, FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; VEHICLE AND BICYCLE DETECTION SOFTWARE AND EQUIPMENT IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS, SOLD AS A UNIT, COMPRISING WIRELESS COMMUNICATION DEVICES FOR DATA OR IMAGE TRANSMISSION, ELECTRIC OR ELECTRONIC SENSORS, AND OPERATING SYSTEM AND APPLICATION SOFTWARE BOTH IN THE NATURE OF RECORDED AND DOWNLOADABLE COMPUTER OPERATING PROGRAM TO DETECT VEHICLE AND BICYCLE PRESENCE AND MOVEMENT; CONTROL CABINETS SPECIFICALLY ADAPTED FOR VEHICLE TRAFFIC CONTROL EQUIPMENT, NAMELY, TRAFFIC SIGNAL CONTROLLERSClass 009 for TRAFFIC CONTROL EQUIPMENT, NAMELY, ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND ACTUATED AND PRETIMED TRAFFIC SIGNAL CONTROLLERS; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC, NAMELY, SYSTEMS COMPRISING ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS, ACTUATED AND PRETIMED TRAFFIC SIGNAL CONTROLLERS, AND RECORDED MOBILE OPERATING SYSTEM SOFTWARE; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE SOLD AS A UNIT FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF COMPUTER HARDWARE AND RECORDED SOFTWARE, SOLD AS A UNIT, FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; TRAFFIC MANAGEMENT EQUIPMENT COMPRISING SOFTWARE TO MANAGE TRAFFIC IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE, SOLD AS A UNIT, FOR OPERATING TRAFFIC CONTROL EQUIPMENT IN THE NATURE OF ACTUATED AND PRETIMED VEHICLE TRAFFIC SIGNALS AND TRAFFIC SIGNAL CONTROLLERS, AND TRAFFIC CONTROLLERS IN THE NATURE OF TRAFFIC LIGHTS, REFLECTORS FOR TRAFFIC SIGNALS, CONTROL CABINETS SPECIALLY ADAPTED FOR TRAFFIC CONTROL EQUIPMENT, AND ELECTRIC OR ELECTRONIC SENSORS FOR VEHICLE TRAFFIC; VEHICLE AND BICYCLE DETECTION SOFTWARE AND EQUIPMENT IN THE NATURE OF RECORDED COMPUTER SOFTWARE AND HARDWARE FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS, SOLD AS A UNIT, COMPRISING WIRELESS COMMUNICATION DEVICES FOR DATA OR IMAGE TRANSMISSION, ELECTRIC OR ELECTRONIC SENSORS, AND OPERATING SYSTEM AND APPLICATION SOFTWARE BOTH IN THE NATURE OF RECORDED AND DOWNLOADABLE COMPUTER OPERATING PROGRAM TO DETECT VEHICLE AND BICYCLE PRESENCE AND MOVEMENT; CONTROL CABINETS SPECIFICALLY ADAPTED FOR VEHICLE TRAFFIC CONTROL EQUIPMENT, NAMELY, TRAFFIC SIGNAL CONTROLLERS
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for CONSULTING AND ADVISORY SERVICES IN THE FIELD OF PLANNING AND DESIGN OF SYSTEM INTEGRATION, NAMELY, CONSULTATION SERVICES, PROVIDING ADVICE AND PLANNING, DESIGN AND IMPLEMENTATION OF COMPUTER TECHNOLOGIES FOR OTHERS IN THE FIELDS OF INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT AND INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT SPECIFICALLY DESIGNED FOR CONNECTED AND AUTOMATED VEHICLES AND THE DESIGN OF TRAFFIC SYSTEMS, TRAFFIC CONTROL EQUIPMENT AND TRAFFIC DESIGN INTEGRATION; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF TRAFFIC CONTROL EQUIPMENT, NAMELY, THE DESIGN OF TRAFFIC CONTROL EQUIPMENT; PROVIDING TEMPORARY USE OF A WEB-BASED SOFTWARE APPLICATION FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: CONSULTING AND ADVISORY SERVICES IN THE FIELD OF PLANNING AND DESIGN OF SYSTEM INTEGRATION, NAMELY, CONSULTATION SERVICES, PROVIDING ADVICE AND PLANNING, DESIGN AND IMPLEMENTATION OF COMPUTER TECHNOLOGIES FOR OTHERS IN THE FIELDS OF INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT AND INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT SPECIFICALLY DESIGNED FOR CONNECTED AND AUTOMATED VEHICLES AND THE DESIGN OF TRAFFIC SYSTEMS, TRAFFIC CONTROL EQUIPMENT AND TRAFFIC DESIGN INTEGRATION; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF TRAFFIC CONTROL EQUIPMENT, NAMELY, THE DESIGN OF TRAFFIC CONTROL EQUIPMENT; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF PLANNING AND DESIGN OF SYSTEM INTEGRATION, NAMELY, THE DESIGN OF TRAFFIC CONTROL EQUIPMENT; PROVIDING TEMPORARY USE OF A WEB-BASED SOFTWARE APPLICATION FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS; DESIGN OF SYSTEM INTEGRATION, NAMELY, DESIGN OF TRAFFIC CONTROL EQUIPMENTClass 042 for CONSULTING AND ADVISORY SERVICES IN THE FIELD OF PLANNING AND DESIGN OF SYSTEM INTEGRATION, NAMELY, CONSULTATION SERVICES, PROVIDING ADVICE AND PLANNING, DESIGN AND IMPLEMENTATION OF COMPUTER TECHNOLOGIES FOR OTHERS IN THE FIELDS OF INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT AND INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS FOR TRAFFIC CONTROL EQUIPMENT SPECIFICALLY DESIGNED FOR CONNECTED AND AUTOMATED VEHICLES AND THE DESIGN OF TRAFFIC SYSTEMS, TRAFFIC CONTROL EQUIPMENT AND TRAFFIC DESIGN INTEGRATION; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF TRAFFIC CONTROL EQUIPMENT, NAMELY, THE DESIGN OF TRAFFIC CONTROL EQUIPMENT; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF PLANNING AND DESIGN OF SYSTEM INTEGRATION, NAMELY, THE DESIGN OF TRAFFIC CONTROL EQUIPMENT; PROVIDING TEMPORARY USE OF A WEB-BASED SOFTWARE APPLICATION FOR DETECTING VEHICLES AND BICYCLES ON ROADWAYS; DESIGN OF SYSTEM INTEGRATION, NAMELY, DESIGN OF TRAFFIC CONTROL EQUIPMENT
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 039 for CONSULTING AND ADVISORY SERVICES IN THE FIELD OF IMPLEMENTATION OF CONNECTED AND AUTOMATED VEHICLES, NAMELY, MANAGEMENT OF VEHICULAR TRAFFIC FLOW THROUGH ADVANCED COMMUNICATIONS NETWORK AND TECHNOLOGY
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Request for Reconsideration Signature
Signature: /SRH/     Date: 01/27/2020
Signatory's Name: Stacey R. Halpern
Signatory's Position: Attorney-of-Record, California bar member

Signatory's Phone Number: 949-760-0404

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
RAM Sale Number: 88472509
RAM Accounting Date: 01/27/2020
        
Serial Number: 88472509
Internet Transmission Date: Mon Jan 27 19:46:54 EST 2020
TEAS Stamp: USPTO/RFR-XXX.XXX.XX.XXX-202001271946542
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c11a5b9aa9f7459fdc9515da95614f89ad0b4-CC
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