TEAS Petition to Revive Abandon Applic

PTO- 2194

Approved for use through 03/31/2024. OMB 0651-0054

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- 2194

Approved for use through 03/31/2024. OMB 0651-0054

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

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 90079290 SPOTON VIRTUAL FENCE(Standard Characters, see http://uspto.report/TM/90079290/mark.png) has been amended as follows: PETITION
Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

Applicant?s Response to Office Action The following is the response of Applicant, OnPoint Systems, LLC., by Counsel, to the Nonfinal Office Action (the ?Office Action?) sent by Examining Attorney Lyal Fox 1) Refusal under Trademark Act Section 2(d) ? Likelihood of Confusion. The Examining Attorney has refused registration of the Applicant?s mark pursuant to Trademark Section 2(d), 15 USC on the grounds that the mark is likely to be confused with an already registered mark. For the following reasons, Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider statutory refusal and allow registration of Applicant?s mark. As cited in the Office Action, likelihood of confusion between trademarks is weighed using a multifactor balancing test set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). While the Office Action aptly cites important factors in weighing this critical test and cites the existing mark with overlapping language, Applicant asks for reconsideration on the very account of the characteristics specific to the words used and its industry, specific to the mark, and as evidenced by the existing cited marks that also overlap yet achieved registration. Such analysis has been made in respect to similar marks as Applicant?s before under the sixth du Pont factor and the number and nature of similar marks in use on similar goods. As the proliferation of marks expands significantly in the internet era, the number and nature of similar marks in use on similar goods, has been growing in importance of analysis of likelihood of confusion since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015). In a recent subsequent case, In re Simpson Industries, Inc., thirteen uses and five third party registrations were submitted to the record. The applicant was seeking to register RAINFOREST NUTRITION in standard characters for dietary and nutritional supplements. The Examining Attorney refused the applicant?s mark based on the registered mark RAINFOREST ANIMALZ, in standard characters for nutritional supplements and after the final refusal, the applicant appealed to the Board. As the goods were in part identical, the Board presumed that the channels of trade and the classes of purchasers were the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The identity in part of the goods and the overlapping trade channels weighed heavily in favor of finding a likelihood of confusion. Moreover, since the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a 2(d) refusal. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). While the marks were deemed similar because they shared the term RAINFOREST, because the term RAINFOREST was conceptually and commercially weak based upon its commonality, the Board determined confusion was not likely. Ultimately reversing the refusal to register the mark, the Board stated that ?given the weakness of the term RAINFOREST, the marks are unlikely to be confused? and adopted the reasoning of the Court in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), which held that ?It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks.? Although not before the USPTO and involving the jewelry industry instead of the pet industry, the Sixth Circuit recently presided over a dispute involving industry common terms and the likelihood of confusion. See generally Sterling Jewelers, Inc. v. Artistry Ltd., Appeal No. 17-4132 (Decided July 24, 2018). In the Sterling case, Artistry accused Sterling of trademark infringement when a Sterling subsidiary, Kay Jewelers began marketing a line of jewelry under the name ?Artistry Diamond Collection.? Artistry never registered a trademark for its name, whereas Sterling registered several of its ?Artistry Diamond Collection? marks with the USPTO, including ARTISTRY DIAMONDS, ARTISTRY BLUE DIAMONDS, and ARTISTRY BLACK DIAMONDS. Artistry asked Sterling to stop using ?Artistry? in Sterling?s marks and filed a petition to cancel Sterling?s trademark registrations. When Sterling responded by filing a suit in Federal district court seeking declaratory judgment of non-infringement. Artistry counterclaimed that Sterling infringed its trademark rights under the Lanham Act, 15 U.S.C. ? 1051 et seq. The central question before the court was whether consumers would be confused about the source of Sterling?s ?Artistry Diamond Collection? marks. The court found no likelihood of confusion and Artistry appealed. In the scenario at hand, a search of trademarks with the terms Spot and On reveals multiple filings of various dog products and an general internet search reveals even more. Moreover, the word "On" is merely a connector, the exclusive right to use the word "dog" is disclaimed in the mark at issue and the class sought for registration is different. In the case of this specific mark, SPOTON VIRTUAL FENCE is a significant leap from SPOT ON DOG. Analogous to the pet industry, the jewelry industry also is ripe with common words. In a jewelry industry case of overlapping and commonly used words, the Sixth Circuit held that the word ?artistry? was not distinctive, and that other jewelry companies ?used the word in some way, shape or form, including sixteen that use the word in their company name.? The prevalence of use of the mark in the jewelry industry diminished the likelihood that a consumer could confuse the two parties and their offerings with each other. To the Court, questions about potential affiliation did not demonstrate confusion under the facts. Accordingly, the Court affirmed the finding of no likelihood of confusion. The Applicant respectfully submits that based on the arguments advanced and cases cited herein, the proposed mark although similar to that of the cited registered mark, cannot be considered to be confusingly similar to the registered marks. While the apt analysis of the Examiner is not incorrect under normal circumstances, the prevalence of the words in the applicant?s mark in its industry, including various combinations of the same, greatly diminishes the likelihood of confusion. As held in Juice Generation, Inc. v. GS Enterprises LLC, and its lineage of cases, the very ubiquity of similar registrations, including those cited in the Office Action, is very evidence of the same. 2) PRIOR-FILED PENDING MARKS Applicant reserves the right to respond on this issue pending resolution. 3)SPECIMEN REQUIREMENT The Applicant includes an updated specimen. 4) IDENTIFICATION/CLASSIFICATION OF NUMBER OF CLASSES/MULTIPLE CLASS ADVISORY The applicant restricts the registration to Class 9 and adopts the Examining Attorney's proffered language as follows: "Wireless electronic animal confinement system; downloadable software in the nature of a mobile application for use in connection with an electronic animal confinement system for tracking animal location, management of confinement perimeter, and providing escape notification." 5. DOMICILE The applicant includes the domicile. The Applicant has responded to all issues raised in the Office Action. If any further information or response is required, please contact the Applicant?s attorney. As evidenced in the application, the Attorney may be reached by phone at 603-695-8565 or email at ekilchenstein@devinemillimet.com. Respectfully submitted, /Eric T. Kilchenstein/ Eric T. Kilchenstein, Esq. Attorney for Applicant

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Wireless animal containment system including a portable and rechargeable system and collar with an app that provides tracking, map, management and escape notifications
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/02/2019 and first used in commerce at least as early as 01/15/2020 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Wireless animal containment system including a portable and rechargeable system and collar with an app that provides tracking, map, management and escape notifications; Wireless electronic animal confinement system; Downloadable software in the nature of a mobile application for use in connection with an electronic animal confinement system for tracking animal location, management of confinement perimeter, and providing escape notificationsClass 009 for Wireless electronic animal confinement system; Downloadable software in the nature of a mobile application for use in connection with an electronic animal confinement system for tracking animal location, management of confinement perimeter, and providing escape notifications
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/02/2019 and first used in commerce at least as early as 01/15/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of The speciment show the mark in use on the applicant's website..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1


Webpage URL: http://spotonfence.com/pages/how-it-works
Webpage Date of Access: 07/16/2021

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ONPOINT SYSTEMS, LLC, a limited liability company legally organized under the laws of New Hampshire, having an address of
      7 Perimeter Rd
      Manchester, New Hampshire 03103
      United States
      Email Address: XXXX
      603-695-8565
Proposed: ONPOINT SYSTEMS, LLC, a limited liability company legally organized under the laws of New Hampshire, having an address of
      7 Perimeter Rd
      Manchester, New Hampshire 03103
      United States
      Email Address: XXXX
      603-695-8565
Correspondence Information (current):
      ERIC T. KILCHENSTEIN
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@devinemillimet.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ekilchenstein@devinemillimet.com
Correspondence Information (proposed):
      Eric T. Kilchenstein
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@devinemillimet.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ekilchenstein@devinemillimet.com

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 $150 is being submitted.

SIGNATURE(S)

Signature: /Eric T. Kilchenstein/      Date: 07/16/2021
Signatory's Name: Eric T. Kilchenstein
Signatory's Position: Attorney
Signatory's Phone Number: 603-695-8565


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: /Eric T. KIlchenstein/      Date: 07/16/2021
Signatory's Name: Eric T. Kilchenstein
Signatory's Position: Attorney
Signatory's Phone Number: 6036958565

Signature method: Signed directly within the form

Response Signature
Signature: /Eric T. Kilchenstein/     Date: 07/16/2021
Signatory's Name: Eric T. Kilchenstein
Signatory's Position: Attorney

Signatory's Phone Number: 6036958565 Signature method: Signed directly within the form

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    ERIC T. KILCHENSTEIN
   DEVINE MILLIMET & BRANCH, PROFESSIONAL ASSOCIATION
   
   111 AMHERST STREET
   MANCHESTER, New Hampshire 03101
Mailing Address:    Eric T. Kilchenstein
   DEVINE MILLIMET & BRANCH, PROFESSIONAL ASSOCIATION
   111 AMHERST STREET
   MANCHESTER, New Hampshire 03101
        
PAYMENT: 90079290
PAYMENT DATE: 07/16/2021
        
Serial Number: 90079290
Internet Transmission Date: Fri Jul 16 00:35:29 ET 2021
TEAS Stamp: USPTO/POA-XX.XX.XXX.XX-20210716003529403
669-90079290-7808f6ba6562ecfab13da32bc22
4a85ea6de5dc06f5a13a99cd26033f3711d76d-D
A-35274605-20210716002136483642