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 11/30/2023) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88925547 |
LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
FEDEX SURROUND |
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. |
ARGUMENT(S) |
Argument against likelihood of confusion entered into Evidence Section. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_104129196177-20201217
151637338271_._75402-v1-R OA_Likelihood_of_confusio n_FEDEX_SURROUND_88925547.pdf |
CONVERTED PDF FILE(S)
(14 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0002.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0003.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0004.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0005.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0006.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0007.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0008.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0009.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0010.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0011.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0012.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0013.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0014.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\255\88925547\xml4\ ROA0015.JPG |
DESCRIPTION OF EVIDENCE FILE |
Argument against likelihood of confusion. |
GOODS AND/OR SERVICES SECTION (009)(class deleted) |
GOODS AND/OR SERVICES SECTION (035) (no change) |
GOODS AND/OR SERVICES SECTION (039) (no change) |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
providing temporary use of non-downloadable computer software for tracking and providing real-time information to customers about
atmosphere, temperature, humidity, movement, speed, and location of shipped packages |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
providing temporary use of non-downloadable computer software for tracking and providing real-time
information to customers about atmosphere, temperature, humidity, movement, speed, and location of shipped packages; providing temporary use of non-downloadable
computer software for tracking and providing real-time information to commercial shipping customers about atmosphere, temperature, humidity, movement, speed, and location of their shipped packages
during transit and delivery |
FINAL DESCRIPTION |
providing temporary use of non-downloadable computer software for tracking and providing real-time information to commercial shipping
customers about atmosphere, temperature, humidity, movement, speed, and location of their shipped packages during transit and delivery |
FILING BASIS |
Section 1(b) |
CORRESPONDENCE INFORMATION (current) |
NAME |
REBECCA LEDERHOSUE |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
chiusptomail@bakermckenzie.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
rebecca.lederhouse@bakermckenzie.com |
DOCKET/REFERENCE NUMBER |
200261 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Rebecca Lederhosue |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
chiusptomail@bakermckenzie.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
rebecca.lederhouse@bakermckenzie.com |
DOCKET/REFERENCE NUMBER |
200261 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Rebecca B. Lederhouse/ |
SIGNATORY'S NAME |
Rebecca B. Lederhouse |
SIGNATORY'S POSITION |
Attorney of record, Illinois bar member |
SIGNATORY'S PHONE NUMBER |
3128618949 |
DATE SIGNED |
12/17/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Dec 17 15:23:59 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20201217152359909619-889
25547-7503b329757cc8b66ef
b144528ff11b22ad144aef08a
3d8d3e8a49d78177bd3e1d-N/
A-N/A-2020121715163733827
1 |
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 11/30/2023) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88925547 FEDEX SURROUND(Standard Characters, see http://uspto.report/TM/88925547/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Argument against likelihood of confusion entered into Evidence Section.
EVIDENCE
Evidence has been attached: Argument against likelihood of confusion.
Original PDF file:
evi_104129196177-20201217
151637338271_._75402-v1-R OA_Likelihood_of_confusio n_FEDEX_SURROUND_88925547.pdf
Converted PDF file(s) ( 14 pages)
Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for software and related devices that emit and receive radio-frequency identification (rfid) credentials, namely, cards, tags, and readers for radio frequency identification credentials,
and devices that transmit digital signals through a mobile cellular telephony network and via global positioning technology, placed on products, in product packaging, and in shipping containers for
the purpose of providing real-time information to customers about atmosphere, temperature, humidity, movement, speed, and location of shipped products and packages
Applicant proposes to amend the following:
Current:
Class 042 for providing temporary use of non-downloadable computer software for tracking and providing real-time information to customers about atmosphere, temperature, humidity, movement, speed, and
location of shipped packages
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: providing temporary use of non-downloadable computer software for tracking and providing real-time information to customers about
atmosphere, temperature, humidity, movement, speed, and location of shipped packages;
providing temporary use of non-downloadable computer software for tracking
and providing real-time information to commercial shipping customers about atmosphere, temperature, humidity, movement, speed, and location of their shipped packages during transit and
deliveryClass 042 for providing temporary use of non-downloadable computer software for tracking and providing real-time information to commercial shipping customers about atmosphere,
temperature, humidity, movement, speed, and location of their shipped packages during transit and delivery
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.
Correspondence Information (current):
REBECCA LEDERHOSUE
PRIMARY EMAIL FOR CORRESPONDENCE: chiusptomail@bakermckenzie.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rebecca.lederhouse@bakermckenzie.com
The docket/reference number is 200261.
Correspondence Information (proposed):
Rebecca Lederhosue
PRIMARY EMAIL FOR CORRESPONDENCE: chiusptomail@bakermckenzie.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rebecca.lederhouse@bakermckenzie.com
The docket/reference number is 200261.
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: /Rebecca B. Lederhouse/ Date: 12/17/2020
Signatory's Name: Rebecca B. Lederhouse
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 3128618949
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: REBECCA LEDERHOSUE
BAKER & MCKENZIE LLP
300 EAST RANDOLPH STREET, SUITE 5000
CHICAGO, Illinois 60601
Mailing Address: Rebecca Lederhosue
BAKER & MCKENZIE LLP
300 EAST RANDOLPH STREET, SUITE 5000
CHICAGO, Illinois 60601
Serial Number: 88925547
Internet Transmission Date: Thu Dec 17 15:23:59 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20201217152359
909619-88925547-7503b329757cc8b66efb1445
28ff11b22ad144aef08a3d8d3e8a49d78177bd3e
1d-N/A-N/A-20201217151637338271