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. 88512005 AUDIO ENHANCEMENT(Standard Characters, see http://uspto.report/TM/88512005/mark.png) has been amended as follows:

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

Applicant reserves the right to respond to the Section 2(e)(1) Refusal should it become necessary. Notwithstanding, Applicant has used its mark for a long time; therefore, applicant is electing to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). The mark has become distinctive of the goods through Applicant?s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this response.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Intercoms; paging equipment; cameras; warning bells and notifications; signal bells and notifications; visual messaging; microphones; speakers; receivers; transmitters; monitors; batteries; servers; emergency notification system comprised of a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; audible and visible notification appliances, strobes, sirens, bells, horns, and speakers; sound transmitting apparatus; sound alarms; sound projectors and amplifiers; assistive listening device not for medical purposes; computer hardware and peripheral devices and computer software for logging, monitoring and alerting in the event of bullying, fighting, weapons, or medical emergencies; building security systems comprising software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; communications software for connecting users of the alerting software using both cloud and on premise networks; two-way intercoms; electronic bells and notification system comprised of electronic warning bells, a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; communications servers
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 09/08/1978 and first used in commerce at least as early as 12/01/1978 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Intercoms; paging equipment; cameras; warning bells and notifications; warning bells and notifications in the nature of communications for educational institutions; signal bells and notifications; downloadable computer software for visual messaging; visual messaging; microphones; audio speakers; speakers; receivers for receiving audio signals; receivers; radio transmitters; transmitters; computer monitors; monitors; batteries; network servers; servers; emergency notification system comprised of a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; audible and visible notification appliances, namely, sirens, electronic warning bells, electronic warning horns, and audio speakers; audible and visible notification appliances, strobes, sirens, bells, horns, and speakers; sound transmitting apparatus; sound alarms; sound projectors and amplifiers; assistive listening device not for medical purposes; computer hardware and peripheral devices and computer software for logging, monitoring and alerting in the event of bullying, fighting, weapons, or medical emergencies; building security systems comprising downloadable software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; building security systems comprising software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; downloadable communications software for connecting users of the alerting software using both cloud and on premise networks; communications software for connecting users of the alerting software using both cloud and on premise networks; two-way intercoms; electronic bells and notification system comprised of electronic warning bells, a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; communications serversClass 009 for Intercoms; paging equipment; cameras; warning bells and notifications in the nature of communications for educational institutions; downloadable computer software for visual messaging; microphones; audio speakers; receivers for receiving audio signals; radio transmitters; computer monitors; batteries; network servers; emergency notification system comprised of a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; audible and visible notification appliances, namely, sirens, electronic warning bells, electronic warning horns, and audio speakers; sound transmitting apparatus; sound alarms; sound projectors and amplifiers; assistive listening device not for medical purposes; computer hardware and peripheral devices and computer software for logging, monitoring and alerting in the event of bullying, fighting, weapons, or medical emergencies; building security systems comprising downloadable software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; downloadable communications software for connecting users of the alerting software using both cloud and on premise networks; two-way intercoms; electronic bells and notification system comprised of electronic warning bells, a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; communications servers
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 09/08/1978 and first used in commerce at least as early as 12/01/1978 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 011 for Flashing strobe light apparatus
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 09/08/1978 and first used in commerce at least as early as 12/01/1978 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 011 . The specimen(s) submitted consists of Point of Purchase. Website and Spec sheet. All sales are over the phone. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-666098242-20191017115604826736_._Audio_Enhancement_Class_11_Specimen_1.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2
Original PDF file:
SPN0-666098242-20191017115604826736_._Audio_Enhancement_Class_11_Specimen_2.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

The applicant's current attorney information: Casey W. Jones. Casey W. Jones of STRONG & HANNI, is located at

      102 S. 200 E., SUITE 800
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 007694.00108.

The phone number is 801-532-7080.

The fax number is 8015961508.

The email address is cjones@strongandhanni.com

The applicants proposed attorney information: Casey W. Jones. Casey W. Jones of STRONG & HANNI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      102 S. 200 E., SUITE 800
      SALT LAKE CITY, Utah 84111
      United States
The docket/reference number is 007694.00108.

The phone number is 801-532-7080.

The fax number is 8015961508.

The email address is cjones@strongandhanni.com

Casey W. Jones 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: CASEY W. JONES. CASEY W. JONES of STRONG & HANNI, is located at

      102 S. 200 E., SUITE 800
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 007694.00108.

The phone number is 801-532-7080.

The fax number is 8015961508.

The email address is cjones@strongandhanni.com; trademarkadmin@strongandhanni.com

The applicants proposed correspondence information: Casey W. Jones. Casey W. Jones of STRONG & HANNI, is located at

      102 S. 200 E., SUITE 800
      SALT LAKE CITY, Utah 84111
      United States
The docket/reference number is 007694.00108.

The phone number is 801-532-7080.

The fax number is 8015961508.

The email address is cjones@strongandhanni.com; trademarkadmin@strongandhanni.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use AUDIO apart from the mark as shown.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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

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: /Casey W. Jones/      Date: 10/17/2019
Signatory's Name: Casey W. Jones
Signatory's Position: Attorney of record, Utah bar member
Signatory's Phone Number: 8015327080


Response Signature
Signature: /Casey W. Jones/     Date: 10/17/2019
Signatory's Name: Casey W. Jones
Signatory's Position: Attorney of Record, Utah bar member

Signatory's Phone Number: 8015327080

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:    CASEY W. JONES
   STRONG & HANNI
   
   102 S. 200 E., SUITE 800
   SALT LAKE CITY, Utah 84111
Mailing Address:    Casey W. Jones
   STRONG & HANNI
   102 S. 200 E., SUITE 800
   SALT LAKE CITY, Utah 84111
        
RAM Sale Number: 88512005
RAM Accounting Date: 10/17/2019
        
Serial Number: 88512005
Internet Transmission Date: Thu Oct 17 11:59:27 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20191017115927976
605-88512005-610b2441b259fc71938b3ccc98c
85f2afcced79961654621f8d651363a5333f7-CC
-59267281-20191017115604826736