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. 88764833 VIVINT AIRBRIDGE(Standard Characters, see http://uspto.report/TM/88764833/mark.png) has been amended as follows:

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

In the Office Action issued April 8, 2020, the Examining Attorney stated the identification for Classes 9, 38, and 42 are indefinite and must be clarified.

Applicant proposes the following amended identification of services for Class 09:

Computer hardware, namely, routers, wireless networks extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; downloadable computer firmware and downloadable computer software for controlling the operation of wireless networks and wireless access point (WAP) devices; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks

Applicant proposes the following amended identification of services for Class 38:

Telecommunications Cconsultation services relating to in the field of wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and Wi-Fiwireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned services

Applicant proposes the following amended identification of services for Class 42:

Telecommunications technologyTechnical consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices

In view of the foregoing remarks, Applicant respectfully asserts that its applied-for mark is entitled to allowance and requests that it be promptly allowed for publication.

If the Examining Attorney requires any changes to the application that could be made by Examiner's Amendment, Applicant respectfully requests that she telephone the undersigned attorney at: (801) 533- 9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this response to Deposit Account No. 23-3178.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer hardware, namely, routers, wireless networks and wireless access point (WAP) devices; wireless routers; wireless router nodes; computer firmware and software for controlling the operation of internet devices; computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks
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: Computer hardware, namely, routers, wireless networks and wireless access point (WAP) devices; Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; computer firmware and software for controlling the operation of internet devices; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; dowloadable computer firmware and downloadable computer software for controlling the operation of wireless networks and wireless access point (WAP) devices; computer software for connecting, managing, securing and operating local and wide area networks; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networksClass 009 for Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; dowloadable computer firmware and downloadable computer software for controlling the operation of wireless networks and wireless access point (WAP) devices; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks
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:

Current:
Class 038 for Consultation services in the field of wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and Wi-Fi equipment; provision of information, advice and assistance relating to all the aforementioned services
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: Consultation services in the field of wireless networks, wireless routers and wireless access point (WAP) devices; Telecommunications consultation services relating to wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and Wi-Fi equipment; rental of telecommunication and wireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned servicesClass 038 for Telecommunications consultation services relating to wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and wireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned services
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:

Current:
Class 042 for Technical consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices
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: Technical consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices; Telecommunications technology consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devicesClass 042 for Telecommunications technology consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Vivint, Inc., a corporation of Utah, having an address of
      4931 North 300 West
      Provo, Utah 84604
      United States

Proposed: Vivint, Inc., a corporation of Utah, having an address of
      4931 North 300 West
      Provo, Utah 84604
      United States
      Email Address: XXXX
Correspondence Information (current):
      JOHN C. STRINGHAM
      PRIMARY EMAIL FOR CORRESPONDENCE: jstringham@wnlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@wnlaw.com

The docket/reference number is 18961.310.
Correspondence Information (proposed):
      John C. Stringham
      PRIMARY EMAIL FOR CORRESPONDENCE: jstringham@wnlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@wnlaw.com

The docket/reference number is 18961.310.

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: /John C. Stringham/     Date: 09/03/2020
Signatory's Name: John C. Stringham
Signatory's Position: Attorney fo Applicant, Utah Bar Member

Signatory's Phone Number: 8015339800

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:    JOHN C. STRINGHAM
   WORKMAN NYDEGGER
   
   60 EAST SOUTH TEMPLE, SUITE 1000
   SALT LAKE CITY, Utah 84111
Mailing Address:    John C. Stringham
   WORKMAN NYDEGGER
   60 EAST SOUTH TEMPLE, SUITE 1000
   SALT LAKE CITY, Utah 84111
        
Serial Number: 88764833
Internet Transmission Date: Thu Sep 03 15:56:33 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202009031556333
75856-88764833-750c6dee2bc754ab9bf5a7c56
ff1f7c0fa7514a9d24a5f6e3d3ba5c3b97a83982
8-N/A-N/A-20200831132117566791