| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88530795 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88530795/mark.png |
| LITERAL ELEMENT | VTECH |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | Provisur Technlogies, Inc. |
| INTERNAL ADDRESS | Suite 730 |
| STREET | 222 North LaSalle Street |
| CITY | Chicago |
| STATE | Illinois |
| ZIP/POSTAL CODE | 60601 |
| COUNTRY | United States |
| trademarks@gouldratner.com | |
| OWNER SECTION (proposed) | |
| NAME | Provisur Technologies, Inc. |
| INTERNAL ADDRESS | Suite 720 |
| STREET | 222 North LaSalle Street |
| CITY | Chicago |
| STATE | Illinois |
| ZIP/POSTAL CODE | 60601 |
| COUNTRY | United States |
| trademarks@gouldratner.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| LEGAL ENTITY SECTION (current) | |
| TYPE | corporation |
| STATE/COUNTRY OF INCORPORATION | Illinois |
| LEGAL ENTITY SECTION (proposed) | |
| TYPE | corporation |
| STATE/COUNTRY OF INCORPORATION | Delaware |
| ARGUMENT(S) | |
|
In the Office Action dated October 21, 2019, the Registration no. 5,062,401 for VTEK ("the Registration") was raised for likelihood of confusion under Section 2(d) with the present mark VTECH. Applicant disagrees with the likelihood of confusion refusal because the Registration is for goods that are distinguishable from the services of the present mark. Applicant has amended the description of services to: "Interactive service support tools for manufacturing plants, namely providing temporary use of online non-downloadable software for tracking and scheduling plant maintenance and troubleshooting of equipment by sending data and images used in connection with wireless communication and hands-free headset for customer service." ("the Services"). It is clear that the Services are distinct from the goods of the Registration. The goods of the Registration include a wide range of electronic components such as batteries, flash drives, video recorders and electrical connections that are in a different channel of trade than the Services. The Services are interactive services for tracking and scheduling plant maintenance which is in a different field of use than the goods for the Registration. An ordinary consumer that uses the goods of the Registration would be a different consumer than uses the Services. The narrow group of consumers that use the Services, namely factory and plant managers and maintenance staff, would not have a likelihood of confusion with the goods of the Registration. In fact, the sophisticated users of the Services, based on the different spellings of the current mark compared to the Registration, would not have a likelihood of confusion between the Services and the goods of the Registration. The Services are focused on activities in plants for manufacture and Services for equipment in plants. So the channels of trade and the end consumers of the Services are distinct from the goods of the Registration and consumers would understand that they emanate from a different source and there is no likelihood of confusion. Applicant respectfully requests that the refusal under 2(d) be withdrawn. With respect to the substitute specimen, Applicant has submitted a new specimen that includes supplemental description of the Services. The originally submitted specimen was one page of the total of three pages in the substitute specimen. The substitute specimen depicts a direct association between the mark and the Services, as they are described within the same specimen. Applicant respectfully requests acceptance of the substitute specimen and allowance of the present application. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Interactive service support tools, namely, software, wireless communication and hands-free headset to provide for plant maintenance and troubleshooting of equipment via customer service representative | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/23/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/23/2019 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Interactive service support tools for manufacturing plants, namely providing temporary use of online non-downloadable software for tracking and scheduling plant maintenance and troubleshooting of equipment by sending data and images used in connection with wireless communication and hands-free headset for customer service. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/23/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/23/2019 |
| STATEMENT TYPE | "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]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPU0-381151632-20191024111156432208_._VTech_Product_Launch_-_Copy.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\885\307\88530795\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\885\307\88530795\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\885\307\88530795\xml4\ROA0004.JPG | |
| SPECIMEN DESCRIPTION | Instructional material depicting headset used with VTECH services and description of VTECH services. |
| ATTORNEY SECTION (current) | |
| NAME | David Newman |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | GOULD & RATNER LLP |
| INTERNAL ADDRESS | SUITE 300 |
| STREET | 222 NORTH LASALLE STREET |
| CITY | CHIACGO |
| STATE | Illinois |
| POSTAL CODE | 60601 |
| COUNTRY | US |
| PHONE | 312-899-1691 |
| tradeamarks@gouldratner.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 101620 |
| ATTORNEY SECTION (proposed) | |
| NAME | David Newman |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | GOULD & RATNER LLP |
| INTERNAL ADDRESS | SUITE 300 |
| STREET | 222 NORTH LASALLE STREET |
| CITY | CHICAGO |
| STATE | Illinois |
| POSTAL CODE | 60601 |
| COUNTRY | United States |
| PHONE | 312-899-1691 |
| trademarks@gouldratner.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 101620.8592 |
| CORRESPONDENCE SECTION (current) | |
| NAME | DAVID NEWMAN |
| FIRM NAME | GOULD & RATNER LLP |
| INTERNAL ADDRESS | SUITE 300 |
| STREET | 222 NORTH LASALLE STREET |
| CITY | CHIACGO |
| STATE | Illinois |
| POSTAL CODE | 60601 |
| COUNTRY | US |
| PHONE | 312-899-1691 |
| tradeamarks@gouldratner.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 101620 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | David Newman |
| FIRM NAME | GOULD & RATNER LLP |
| INTERNAL ADDRESS | SUITE 300 |
| STREET | 222 NORTH LASALLE STREET |
| CITY | CHICAGO |
| STATE | Illinois |
| POSTAL CODE | 60601 |
| COUNTRY | United States |
| PHONE | 312-899-1691 |
| trademarks@gouldratner.com; dnewman@gouldratner.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 101620.8592 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /David Newman/ |
| SIGNATORY'S NAME | David Newman |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 3128991691 |
| DATE SIGNED | 10/24/2019 |
| RESPONSE SIGNATURE | /David Newman/ |
| SIGNATORY'S NAME | David Newman |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 3128991691 |
| DATE SIGNED | 10/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 24 12:56:41 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.X-20 191024125641308450-885307 95-6105bcd40e6d0c6b08cecb a22121ea0ec47905529dcc9de 8d2e6b72bf8ca920f8-N/A-N/ A-20191024111156432208 |
| 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) |
In the Office Action dated October 21, 2019, the Registration no. 5,062,401 for VTEK ("the Registration") was raised for likelihood of confusion under Section 2(d) with the present mark VTECH. Applicant disagrees with the likelihood of confusion refusal because the Registration is for goods that are distinguishable from the services of the present mark. Applicant has amended the description of services to: "Interactive service support tools for manufacturing plants, namely providing temporary use of online non-downloadable software for tracking and scheduling plant maintenance and troubleshooting of equipment by sending data and images used in connection with wireless communication and hands-free headset for customer service." ("the Services"). It is clear that the Services are distinct from the goods of the Registration.
The goods of the Registration include a wide range of electronic components such as batteries, flash drives, video recorders and electrical connections that are in a different channel of trade than the Services. The Services are interactive services for tracking and scheduling plant maintenance which is in a different field of use than the goods for the Registration. An ordinary consumer that uses the goods of the Registration would be a different consumer than uses the Services. The narrow group of consumers that use the Services, namely factory and plant managers and maintenance staff, would not have a likelihood of confusion with the goods of the Registration. In fact, the sophisticated users of the Services, based on the different spellings of the current mark compared to the Registration, would not have a likelihood of confusion between the Services and the goods of the Registration. The Services are focused on activities in plants for manufacture and Services for equipment in plants. So the channels of trade and the end consumers of the Services are distinct from the goods of the Registration and consumers would understand that they emanate from a different source and there is no likelihood of confusion. Applicant respectfully requests that the refusal under 2(d) be withdrawn.
With respect to the substitute specimen, Applicant has submitted a new specimen that includes supplemental description of the Services. The originally submitted specimen was one page of the total of three pages in the substitute specimen. The substitute specimen depicts a direct association between the mark and the Services, as they are described within the same specimen. Applicant respectfully requests acceptance of the substitute specimen and allowance of the present application.
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.
