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. 88614132 HOME CONNECT (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8861413 2/large) has been amended as follows:

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

RESPONSE TO OFFICE ACTION AND REQUEST FOR SUSPENSION - In the Office Action dated December 13, 2019, the Trademark Examining Attorney ("Examiner") refused Applicant's referenced trademark application pending a disclaimer requirement, amendments to the identification of goods/services, and amendments to the written description of the mark. The Examiner also cited a prior- pending application that may present a bar to registration of Applicant's HOME CONNECT and Design mark. Given that Applicant's HOME CONNECT and Design mark and the cited mark, as well as the goods and services identified by same, are wholly dissimilar, and the widespread third-party use of the terms "home" and/or "connect" renders confusion unlikely, Applicant respectfully disagrees with the Examiner's position. Additionally, Applicant submits that literal portion of Applicant's HOME CONNECT and Design mark does not immediately describe the subject matter or purpose of Applicant's goods and services such that a disclaimer is necessary. Nonetheless, Applicant respectfully requests that the Examiner suspend action on Applicant's above- captioned trademark application while Applicant awaits a determination regarding the cited prior- pending application (i.e., Serial Nos. 87/455,161). Please contact undersigned counsel with any inquiries. Thank you.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for Telecommunications; provision of electronic online access to information databases and files sent via telecommunications media; provision of access to information on the internet and via mobile terminals; electronic exchange of messages by means of chatlines, chatrooms and internet forums; telecommunications by means of platforms and portals on the internet and via mobile terminals; provision of access to an online interface for checking heating devices, water supply devices, lighting devices, sanitary devices, climate devices, ventilation devices and security devices; information and consulting in relation to all aforementioned services; electronic message transmission

Applicant proposes to amend the following:

Current:
Class 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing apparatus, measuring apparatus, signaling apparatus, checking apparatus, life-saving apparatus, teaching apparatus; optical, weighing instruments, measuring instruments, signaling instruments, checking instruments, life-saving instruments, teaching instruments; apparatus for conducting, switching, converting, storing, controlling, checking electricity; instruments for conducting, switching, converting, storing, controlling, checking electricity; apparatus for recording; transmission, processing, reproduction of sound, image, data; magnetic recording carriers; hardware for data processing; computers; computer software; recorded data carriers of all kinds; unrecorded data carriers of all kinds; computer programs; electronically stored data; electronic publications; special systems for house and building technology, essentially consisting of computers including the associated software and/or essentially consisting of electronic apparatus and instruments for monitoring, controlling, operating miscellaneous electrical devices for house and building technology and for alarm systems; heating systems; climate systems; lighting systems; blind systems; monitoring systems; ventilation systems; access control systems; security systems; multimedia systems; automated control equipment for buildings; devices for communication and information technology and telecommunications, aforementioned goods where included in class 9
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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing apparatus, measuring apparatus, signaling apparatus, checking apparatus, life-saving apparatus, teaching apparatus; Downloadable software, namely, applications for mobile devices for controlling home appliances and receiving status information about home appliances; optical, weighing instruments, measuring instruments, signaling instruments, checking instruments, life-saving instruments, teaching instruments; Downloadable software, namely, applications for mobile devices for home automation; apparatus for conducting, switching, converting, storing, controlling, checking electricity; instruments for conducting, switching, converting, storing, controlling, checking electricity; apparatus for recording; transmission, processing, reproduction of sound, image, data; magnetic recording carriers; hardware for data processing; computers; computer software; recorded data carriers of all kinds; unrecorded data carriers of all kinds; computer programs; electronically stored data; electronic publications; special systems for house and building technology, essentially consisting of computers including the associated software and/or essentially consisting of electronic apparatus and instruments for monitoring, controlling, operating miscellaneous electrical devices for house and building technology and for alarm systems; heating systems; climate systems; lighting systems; blind systems; monitoring systems; ventilation systems; access control systems; security systems; multimedia systems; automated control equipment for buildings; devices for communication and information technology and telecommunications, aforementioned goods where included in class 9Class 009 for Downloadable software, namely, applications for mobile devices for controlling home appliances and receiving status information about home appliances; Downloadable software, namely, applications for mobile devices for home automation
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 hereby adds the following class of goods/services to the application:
New: Class 042 (Original Class: 038 ) for Telecommunication services, namely providing temporary use of non-downloadable computer software for controlling home appliances and receiving status information about home appliances; providing temporary use of non-downloadable computer software for home automation
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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the design of a cartoon speech bubble enclosing a house icon, next to the wording HOME CONNECT.

The owner's/holder's current attorney information: Michael E Tschupp. Michael E Tschupp of BSH HOME APPLIANCES CORPORATION, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ATTN: IP DEP'T
      100 BOSCH BLVD.
      NEW BERN, North Carolina 28562
      United States
The docket/reference number is 2019W00788US.
      The phone number is 949-440-7100.
      The email address is mbx-nbn-intelprop@bshg.com

The owner's/holder's proposed attorney information: Michael E Tschupp. Other appointed attorneys are Andre Pallapies; Brandon Braun. Recognized Canadian attorney(s)/agent(s) is/are Andre Pallapies; Brandon Braun. Michael E Tschupp of BSH Home Appliances Corporation, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Attn: IP Dep't
      100 Bosch Blvd.
      New Bern, North Carolina 28562
      United States
The docket/reference number is 2019W00788US.
      The phone number is 949-440-7100.
      The email address is michael.tschupp@bshg.com

Michael E Tschupp 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.Correspondence Information (current):
      MICHAEL E TSCHUPP
      PRIMARY EMAIL FOR CORRESPONDENCE: mbx-nbn-intelprop@bshg.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): michael.tschupp@bhsg.com

The docket/reference number is 2019W00788US.
Correspondence Information (proposed):
      Michael E Tschupp
      PRIMARY EMAIL FOR CORRESPONDENCE: michael.tschupp@bshg.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mbx-nbn-intelprop@bhsg.com

The docket/reference number is 2019W00788US.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Michael Tschupp/     Date: 06/15/2020
Signatory's Name: Michael Tschupp
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 949-440-7100

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:    MICHAEL E TSCHUPP
   BSH HOME APPLIANCES CORPORATION
   ATTN: IP DEP'T
   100 BOSCH BLVD.
   NEW BERN, North Carolina 28562
Mailing Address:    Michael E Tschupp
   BSH Home Appliances Corporation
   Attn: IP Dep't
   100 Bosch Blvd.
   New Bern, North Carolina 28562
        
Serial Number: 88614132
Internet Transmission Date: Mon Jun 15 16:53:24 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200615165324
205415-88614132-710a1612b616e15ab1ebad94
9d2602d5eceed9ca1cb29a8a8389c0efc94ef15-
N/A-N/A-20200615163039243708