Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88929674 CHAMBERLAIN (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8892967 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Electric door and gate opening and closing systems; Remote controls for doors, gates, lights, light switches, electrical plugs and sockets, cameras and door locks; Electronic transmitters for controlling door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, cameras and door locks, and providing status of same; Lighting controls; Lights and lighting systems; Light switches; Electrical plugs and sockets; Power controllers; Electronic actuators; Electronic readers and controllers for controlling access to a premises or secured area; Radio receiver units; Radio transmitter units; Keypads for use with door and gate operators; Access control systems for providing and restricting access to electronically monitored and/or secured enclosures, premises or areas; Access control and alarm monitoring systems; Home, office and industrial automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home, office and industrial monitoring and control applications; Electronic transmitter-controller and automated pet door combination sold as a unit; Electronic transmitters that activate automated pet doors; Magnetic devices that activate self-unlocking pet doors; Automated pet doors with integrated digital cameras; Communications hubs; Electronic hubs for connecting internet of things (IoT) enabled devices; Controllers for internet of things (IoT) enabled devices; Home, office and industrial automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, security, electrical power, doors, gates, locks and cameras; Computer hardware and software systems for remotely controlling lights and lighting devices, light switches, electrical plugs and outlets, access devices, security devices, locks, and cameras within a building or building perimeter; Electronic security devices, namely, electronic controls for granting access and egress through doors or gates; cameras; Electric and electronic video surveillance installations; Computer application software for mobile communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks, and providing status of same; Downloadable mobile applications and computer application software for mobile devices, namely, mobile phones, tablet computers, personal computers, and vehicle infotainment systems for accessing and controlling internet of things (IoT) enabled devices, namely, door and gate operators, lights and lighting systems, light switches, electrical plugs and outlets, locks and cameras, and electronic locks; and Computer software for opening doors, controlling machinery and operating lights
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: Electric door and gate opening and closing systems; Remote controls for doors, gates, lights, light switches, electrical plugs and sockets, cameras and door locks; Electronic transmitters for controlling door and gate operators, lights, namely, motion sensitive security lights, garage door activation warning beacons and lighting systems, light switches, electrical plugs and sockets, cameras and door locks, and providing status of same; Electronic transmitters for controlling door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, cameras and door locks, and providing status of same; Lighting controls; Lights and lighting systems comprising overhead lights, wall lights, light outlets and switches; Lights and lighting systems; Light switches; Electrical plugs and sockets; Power controllers; Electronic actuators; Electronic readers and controllers for controlling access to a premises or secured area; Radio receiver units; Radio transmitter units; Keypads for use with electric door and gate operators; Keypads for use with door and gate operators; Access control systems for providing and restricting access to electronically monitored and/or secured enclosures, premises or areas; Access control and alarm monitoring systems; Home, office and industrial automation systems comprising wireless and wired controllers, controlled devices, and downloadable software for lighting, HVAC, security, safety and other home, office and industrial monitoring and control applications; Home, office and industrial automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home, office and industrial monitoring and control applications; Electronic transmitter-controller and automated pet door combination sold as a unit, that allows animals to enter and exit a confined space; Electronic transmitter-controller and automated pet door combination sold as a unit; Electronic transmitters that activate automated pet doors; Automated pet doors with integrated digital cameras; Magnetic devices that activate self-unlocking pet doors; Communications hubs; Electronic hubs for connecting and controlling networked devices or internet of things (IoT) enabled devices in a home, office, commercial or industrial setting; Electronic controllers for use with internet of things (IoT) enabled devices; Electronic hubs for connecting internet of things (IoT) enabled devices; Home, office and industrial automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, security, electrical power, doors, gates, locks and cameras; Controllers for internet of things (IoT) enabled devices; Computer hardware and downloadable or recorded software systems for remotely controlling lights and lighting devices, light switches, electrical plugs and outlets, access devices, security devices, locks, and cameras within a building or building perimeter; Electronic security devices, namely, electronic controls for granting access and egress through doors or gates; Computer hardware and software systems for remotely controlling lights and lighting devices, light switches, electrical plugs and outlets, access devices, security devices, locks, and cameras within a building or building perimeter; cameras; Electric and electronic video surveillance installations; Downloadable or recorded computer application software for mobile communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks, and providing status of same; Downloadable mobile applications and computer application software for mobile devices, namely, mobile phones, tablet computers, personal computers, and vehicle infotainment systems for accessing and controlling internet of things (IoT) enabled devices, namely, door and gate operators, lights and lighting systems, light switches, electrical plugs and outlets, locks and cameras, and electronic locks; Computer application software for mobile communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks, and providing status of same; Downloadable or recorded computer software for opening doors, controlling machinery and operating lights; and Computer software for opening doors, controlling machinery and operating lightsClass 009 for Remote controls for doors, gates, lights, light switches, electrical plugs and sockets, cameras and door locks; Electronic transmitters for controlling door and gate operators, lights, namely, motion sensitive security lights, garage door activation warning beacons and lighting systems, light switches, electrical plugs and sockets, cameras and door locks, and providing status of same; Lighting controls; Lights and lighting systems comprising overhead lights, wall lights, light outlets and switches; Light switches; Electrical plugs and sockets; Power controllers; Electronic actuators; Electronic readers and controllers for controlling access to a premises or secured area; Radio receiver units; Radio transmitter units; Keypads for use with electric door and gate operators; Access control systems for providing and restricting access to electronically monitored and/or secured enclosures, premises or areas; Access control and alarm monitoring systems; Home, office and industrial automation systems comprising wireless and wired controllers, controlled devices, and downloadable software for lighting, HVAC, security, safety and other home, office and industrial monitoring and control applications; Electronic transmitter-controller and automated pet door combination sold as a unit, that allows animals to enter and exit a confined space; Electronic transmitters that activate automated pet doors; Automated pet doors with integrated digital cameras; Communications hubs; Electronic hubs for connecting and controlling networked devices or internet of things (IoT) enabled devices in a home, office, commercial or industrial setting; Electronic controllers for use with internet of things (IoT) enabled devices; Home, office and industrial automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, security, electrical power, doors, gates, locks and cameras; Computer hardware and downloadable or recorded software systems for remotely controlling lights and lighting devices, light switches, electrical plugs and outlets, access devices, security devices, locks, and cameras within a building or building perimeter; Electronic security devices, namely, electronic controls for granting access and egress through doors or gates; cameras; Electric and electronic video surveillance installations; Downloadable or recorded computer application software for mobile communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks, and providing status of same; Downloadable mobile applications and computer application software for mobile devices, namely, mobile phones, tablet computers, personal computers, and vehicle infotainment systems for accessing and controlling internet of things (IoT) enabled devices, namely, door and gate operators, lights and lighting systems, light switches, electrical plugs and outlets, locks and cameras, and electronic locks; Downloadable or recorded computer software for opening doors, controlling machinery and operating lights
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant hereby adds the following class of goods/services to the application:
New: Class 006 for Automated pet appliances, namely metal pet doors with integrated digital cameras
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant hereby adds the following class of goods/services to the application:
New: Class 011 for Wall lights; Garage lights; LED bulbs; LED lights
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant hereby adds the following class of goods/services to the application:
New: Class 019 for Automated pet appliances, namely non-metal pet doors with integrated digital cameras
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      EDWARD E. CLAIR
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@fitcheven.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eclair@fitcheven.com

The docket/reference number is 5569-148783.
Correspondence Information (proposed):
      Edward E. Clair
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@fitcheven.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eclair@fitcheven.com

The docket/reference number is 5569-148783.

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).

FEE(S)
Fee(s) in the amount of $1050 is being submitted.

SIGNATURE(S)
Declaration Signature

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.

Signature: /Edward E. Clair/      Date: 02/25/2021
Signatory's Name: Edward E. Clair
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 13125777000

Signature method: Sent to third party for signature

Response Signature
Signature: /Edward E. Clair/     Date: 02/25/2021
Signatory's Name: Edward E. Clair
Signatory's Position: Attorney of record (Illinois Bar Member #6269539)

Signatory's Phone Number: 312-577-7000 Signature method: Sent to third party for signature

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:    EDWARD E. CLAIR
   FITCH, EVEN, TABIN & FLANNERY, LLP
   SUITE 2100
   120 S. LASALLE STREET
   CHICAGO, Illinois 60603
Mailing Address:    Edward E. Clair
   FITCH, EVEN, TABIN & FLANNERY, LLP
   SUITE 2100
   120 S. LASALLE STREET
   CHICAGO, Illinois 60603
        
PAYMENT: 88929674
PAYMENT DATE: 02/25/2021
        
Serial Number: 88929674
Internet Transmission Date: Thu Feb 25 15:56:01 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202102251556014
08983-88929674-770abe4f9adc7b544969de4dd
4dc356ce6d9d36aad0b678d94b8b46361b081281
0-CC-55592703-20210225150530148755