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 11/30/2023)

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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 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