Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA686934
`ESTTA Tracking number:
`07/31/2015
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91219654
`Defendant
`Vigilon LLC
`JAMES MICHAEL SMEDLEY
`JAMES M SMEDLEY LLC
`776 MOUNTAIN BLVD, SUITE 105
`WATCHUNG, NJ 07069
`UNITED STATES
`info@sigmalawgroup.com, james.smedley@sigmalawgroup.com
`Answer and Counterclaim
`James M. Smedley, Esq.
`info@sigmalawgroup.com
`/James M Smedley/
`07/31/2015
`TTAB_Proc_91219654-Answer.pdf(97768 bytes )
`Exhibit A.pdf(3252142 bytes )
`Exhibit B.pdf(483476 bytes )
`Exhibit C.pdf(737581 bytes )
`Exhibit D.pdf(4945509 bytes )
`Exhibit E-2.pdf(3090361 bytes )
`Exhibit F.pdf(715486 bytes )
`Registration Subject to the filing
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Registration No
`International Re-
`gistration No.
`Registrant
`
`Grounds for filing
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`3595197
`NONE
`
`Registration date
`International Re-
`gistration Date
`
`03/24/2009
`NONE
`
`Avigilon Corporation
`Suite 378
`Vancouver, British Columbia, V6H 4E4
`CANADA
`The registration was obtained fraudulently.
`
`Goods/Services Subject to the filing
`
`Class 009. First Use: 2006/07/00 First Use In Commerce: 2007/03/00
`All goods and services in the class are requested, namely: Security surveillance hardware,
`namely,surveillance cameras; environmental enclosures, namely, structures specially adapted to hold
`and protect cameras from outdoor elements and tampering; optical lenses for closed circuit television
`and video surveillance; security software, namely, user and/or operator software forcontrol and monit-
`oring of live images from security surveillance cameras both on a local area network and remotely
`fromthe Internet and software for automatedrecording, storage, retrieval and enhancement of images
`from security surveillance cameras
`Class 037. First Use: 2006/07/00 First Use In Commerce: 2007/03/00
`All goods and services in the class are requested, namely: Installation and repair of security systems
`Class 042. First Use: 2006/07/00 First Use In Commerce: 2007/03/00
`All goods and services in the class are requested, namely: Custom design and engineering of closed-
`circuit television security systems
`Class 045. First Use: 2006/07/00 First Use In Commerce: 2007/03/00
`
`

`
`All goods and services in the class are requested, namely: Electronic monitoring services for security,
`namely, closed circuit television and video surveillance monitoring, imageanalysis and image pro-
`cessing; securityconsulting, namely, closed circuit television and video surveillance system appraisals
`and recommendation
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91219654
`
`Mark: VIGILON
`Serial No.: 86/107,366
`
`
`
`
`
`CERTIFICATE OF TRANSMISSION
`Date of Deposit: July 31, 2015
`
` I
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` hereby certify that this paper or fee is being transmitted
`electronically via ESTTA under 37 CFR 1.10 on the date
`indicated above and is addressed to the Assistant Commissioner
`for Trademarks, Box – TTAB, 2900 Crystal Drive, Arlington,
`VA 22202-3513
`
`
`_________/James M. Smedley/________
`James Michael Smedley, Esq.
`
`
`
`Avigilon Corporation
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`v.
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`Vigilon LLC
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`Opposer,
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`Applicant
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`Assistant Commissioner for Trademarks
`Box – TTAB
`2900 Crystal Drive
`Arlington, VA 22202-3513
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`
`
`§
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`§
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`§
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`§
`§
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`§
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`§
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`Applicant’s Answer to Notice of Opposition, Affirmative Defenses and Counterclaim
`
`Vigilon LLC (“Applicant”), by and through its undersigned attorney, respectfully submits the
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`following answer to the above identified opposition proceeding (the “Opposition”) submitted by the
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`Avigilon Corporation (“Opposer”) with respect to Application Serial No. 86/107,366 (the “Application”).
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`
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`In response to the Opposition, the Applicant pleads and avers as follows:
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`1. The Applicant is a limited liability company, having an address of 756 18th Ave NE
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`Saint Petersburg, FL 33704.
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`2. The Applicant has prepared, filed and submitted the Application on October 13, 2013, claiming a
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`date of first use and date of first use in interstate commerce of May 10, 2013.
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`Answer to Opposition
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`Page 1 of 10
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`

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`3. Applicant is a service provider, offering free mobile device applications and complementary
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`information services to enable members of the general public to enhance their situational
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`awareness of items of interest and allowing for the sharing of information pertaining to the
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`interest through social networking. Accordingly, Applicant’s service by definition is a social
`network system (e.g., FACEBOOK®, TWITTER®, INSTAGRAM®) that competes in market of
`social networking services.
`
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`4. Moreover, the information delivered to Applicant’s users is crowdsourced in its entirety.
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`Accordingly, the source of the content originates from the community of users rather than from
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`Applicant. Likewise, the information shared by Applicant’s users spans the entire spectrum of
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`human interests and everyday life, ranging from traffic, weather, medical treatments, scientific
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`research, and the mundane, such as the length of the line at a local coffee shop.
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`5. Applicant’s Mark is used primarily in the field of software applications for processing
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`information generated from users and sharing such information. More specifically, Applicant’s
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`Mark is used in the context of exchanging situational information (e.g. traffic jams, waiting lines
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`at restaurants) and distributing this information via a social media platform.
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`6. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶1 of the Notice of Opposition.
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`7. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶2 of the Notice of Opposition.
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`8. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶3 of the Notice of Opposition.
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`9. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶4 of the Notice of Opposition.
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`10. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶¶5-6 of the Notice of Opposition. However, Applicant does note that pending
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`application serial no. 86/329,456 was filed well after the present Application and to the extent
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`that Opposer believes there could be a likelihood of confusion, Applicant submits that the
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`pending application serial no. 86/329,456 should be suspended until resolution of this matter.
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`Further, to the extent Opposer believes there could be a likelihood of confusion between the
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`Answer to Opposition
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`Page 2 of 10
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`

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`Application and pending application serial no. 86/329,456, Applicant submits, upon information
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`and belief, that the Opposer has failed to notify the examining attorney in the pending application
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`serial no. 86/329,456 of the Application and its potential ramifications for the pending application
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`serial no. 86/329,456.
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`11. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶7.
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`12. The Applicant denies knowledge and information sufficient to admit or deny the allegations made
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`by Opposer in ¶8 of the Notice of Opposition. However, to the extent that the Opposer alleges
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`that the public identifies with the Avigilon mark, it is upon information and belief that the
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`Opposer does not sell its products directly to the public (i.e., end-users), but rather exclusively
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`through trade channels via its network of dealers and integrators (i.e., resellers). (See, Exhibit C,
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`p. 5). In this regard, it is upon information and belief that Opposer is unique in its industry for
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`specifically excluding direct sales channels to end consumers. Therefore, there is no expectation
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`that the Opposer’s mark has attained fame among the public.
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`13. Applicant admits the Application was filed on October 13, 2013 and claims a first use in
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`interstate commerce date of May 10, 2013. The Applicant denies knowledge and information
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`sufficient to admit or deny the remaining allegations made by Opposer in ¶9 of the Notice of
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`Opposition.
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`14. Applicant denies
`
`the allegations contained
`
`in ¶10.
`
` Rather,
`
`the Application covers
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`“Communications software for connecting a mobile device to an application server for creating
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`and managing situational awareness in a community (Int. Cl. 9); computer services, namely,
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`creating an on-line community for registered users to create and manage situational awareness;
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`Creating an on-line community for citizens and registered authorities for the purpose of creating
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`and managing situational awareness (Int. Cl. 42).
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`15. The Applicant admits that the spelling of the word VIGILON is different from AVIGILON in
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`that VIGILON does not have the “A” that AVIGILON includes. The Applicant denies the
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`remaining allegations made by Opposer in ¶11.
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`16. Applicant denies the allegations contained in ¶12.
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`17. Applicant denies the allegations contained in ¶13.
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`Answer to Opposition
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`Page 3 of 10
`
`

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`18. The relevant industry of Opposer is vastly different from that of the relevant industry of the
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`Applicant. Opposer’s goods are services are provided to the surveillance industry, with a
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`particular focus on high-end video surveillance equipment. Primarily, the Opposer offers
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`hardware for use with surveillance (e.g. cameras) and software (e.g. high definition video
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`analytics software) to be used in connection with Opposer’s security hardware. (See, Exhibit A,
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`pp.1-8) In essence, the information delivered from Opposer’s goods consists of data necessary for
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`security monitoring. In contrast, the Applicant’s services and goods provide members of the
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`general public with social network services to facilitate communal sharing of information relevant
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`to their individual interests. Applicant offers no goods or services related to the surveillance and
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`access control industry.
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`19. The typical consumer of Applicant’s goods and services differs vastly from Opposer’s consumer.
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`Applicant’s goods and services are directed towards individuals of the general public (e.g.
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`teenagers, families, average consumers), who would find social network information useful. In
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`contrast, it is upon information and belief that Opposer’s typical consumers are commercial and
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`institutional entities such as San Diego Metro Transit System, Merced College, Southside
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`Medical Center, Oklahoma County Sheriff’s Office, and Target Field (See, Exhibit F). They are
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`large commercial entities (e.g., casinos, stadiums), and public/governmental institutions (e.g.,
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`schools, critical infrastructure, transportation stations) requiring expensive surveillance systems.
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`(See, Exhibit A, p. 5) Consumers of Opposer’s goods and services are sophisticated buyers with a
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`high degree of surveillance industry knowledge. Moreover, the sales cycle for Opposer’s
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`consumers can take several years of due diligence before making an informed decision.
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`20. Further, the goods and services of each party differ entirely. The market for Applicant’s goods
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`and services is the general public who want to exchange information among themselves for free.
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`The market for Opposer’s goods and services are companies and institutions that can afford
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`expensive surveillance and access control systems. The obvious differences between the free
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`social network service of the Applicant and the highly specialized surveillance product of the
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`Opposer are further distanced by the respective prices of their goods and services. Applicant’s
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`goods are offered free of charge. In contrast, Opposer’s goods can exceed several million dollars.
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`As an example, it is upon information and belief that a single installation can be more than $2.5
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`million (USD). (See, Exhibit D, pp. 44-46, shows an Avigilon installation at Dallas Love Field
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`Airport costing an estimated $2,770,713.75). The relevant consumers of the products of the
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`Opposer are discerning and much research and planning goes into purchasing of such products
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`Answer to Opposition
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`Page 4 of 10
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`

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`and therefore these consumers are necessarily sophisticated and careful in making their
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`purchasing decisions, eliminating any chance of confusion between the Opposer’s mark and
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`Applicant’s Mark.
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`21. The respective goods and services of the Applicant and Opposer travel in unrelated trade
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`channels. The primary trade channel for Applicant and social networks in general is word of
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`mouth referrals. The trade channels of Opposer are very specific to the surveillance industry.
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`Moreover, Opposer is unique in its industry for specifically excluding direct sales channels to end
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`consumers and does not sell directly to the public (i.e., end-users). Instead, it sells indirectly
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`through its network of dealers and integrators (i.e., resellers). (See, Exhibit C, p. 5). Applicant
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`offers no goods or services in these trade channels.
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`22. Applicant’s Mark, as identified in the Application, is distinguishable in appearance, sound,
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`connotation and commercial impression from the marks of the Opposer, and there would be no
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`likelihood of confusion between the Mark of the Applicant and the mark of the Opposer.
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`Applicant’s Mark consists of both syllabic and textual differences that are not insignificant in
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`nature.
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`23. Most importantly, Applicant’s Mark is syntactically different than the Opposer’s mark. The
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`prefix “a-” when applied to many words creates an opposite connotation. For example, adding an
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`“a-”prefix to the word “TYPICAL” creates “ATYPICAL”, meaning “not typical”, as adding an a-
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`prefix to the word “MORAL” creates “AMORAL”, meaning “not moral”. Clearly the exact
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`opposite meaning is conveyed from Applicant’s Mark.
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`24. Applicant’s Mark, is so distinguishable from the mark of the Opposer, and the industries of each
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`entity are so disparate, that there would be no likelihood of confusion between the marks.
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`25. Applicant’s Mark would cause no significant risk of confusion and would cause no harm to the
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`Opposer as the marks in question and the industries and consuming public involved are so
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`disparate as to not provide any concern of these risks.
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`26. Further, the long-term, widespread and concurrent uses of the Mark in other capacities by third
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`parties in the commercial market place diminish, if not outright eliminate, Opposer’s claim of a
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`likelihood of confusion. Provided below is a list of others that use the VIGILON mark in similar,
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`if not identical, classes of goods and services, with use by these third parties preceding and/or
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`concurrent with the Opposer’s mark. (See, Exhibit A, pp. 15-18). Notably, some of the preceding
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`Answer to Opposition
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`Page 5 of 10
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`

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`and concurrent uses are within or related to the Opposer’s industry. Accordingly, the Opposer’s
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`mark is “weak” in that the field of users of the same or similar names is pervasive.
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`Comments
`Both Opposer and Entity are in
`the securities industry.
`Entity serves security service
`providers; offers goods and
`services closely related to those
`of Opposer.
`(e.g.
`the Entity
`Goods of
`telecommunications software)
`are related to and necessary for
`use with Opposer’s goods
`Entity and Opposer sell related
`goods and services to similar
`customers
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`
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`Entity
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`Earliest Known Use Date
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`Vigilon Inc. (Canada)
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`2001
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`Vigilon Inc. (McLean, VA)
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`2003
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`WaterCove Networks Inc.
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`October 15, 2001
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`Honeywell
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`2012
`
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`27. Applicant particularly wishes to highlight the federal registration held by WaterCove Networks,
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`Inc. (“WaterCove”) for the “VIGILON” name on the principal register (US Registration Number
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`2,640,942), in the same class of services as the present Mark and the Opposer’s mark (Class 009).
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`(See, Exhibit A, p.19). WaterCove’s first use of the VIGILON mark, cited as October 15, 2001
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`in its registration, preceded Opposer’s first use by nearly 5 years. Yet, when Opposer’s
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`application for its AVIGILON mark was examined, the examiner noted that there were no similar
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`registered or pending mark has been found that would bar registration under Trademark Act
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`Section 2(d), 15 U.S.C. §1052(d). (See, Exhibit B). Applicant submits that where there is no
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`likelihood of confusion between VIGILON and AVIGILON, the converse must also be true.
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`Explicitly, that there can be no likelihood of confusion between AVIGILON and VIGILON.
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`28. Further, WaterCove’s VIGILON mark was registered in the same class of goods as the
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`AVIGILON mark of the Opposer. It is upon information and belief that Opposer was aware of
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`WaterCove’s registration at the time of filing for the registration of AVIGILON and that Opposer
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`was of the belief that there was no likelihood of confusion between AVIGILON and VIGILON at
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`that time, even where the goods and services were closely related to one another. As such, at the
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`time of application and registration of the AVIGILON mark by the Opposer, the Opposer knew
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`that others had the right to use and were using the VIGILON mark as the name of the product.
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`Answer to Opposition
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`Page 6 of 10
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`29. Further, to the extent that Opposer claims exclusive use in the term AVIGILON, Applicant
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`respectfully submits that the Opposer cannot claim that it ever used the AVIGILON name when
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`there were not one or more third parties using the VIGILON name concurrently. Therefore, it is
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`upon Applicant’s information and belief that, to the extent Opposer’s use of the mark AVIGILON
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`was exclusive, Opposer has never used AVIGILON without there being a senior or concurrent
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`use of the VIGILON name in the same or similar classes of goods and services.
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`30. The weakness of the AVIGILON mark is further exacerbated by the descriptive nature of the
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`mark, in conjunction with the goods and services provided by the Opposer. The root of the
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`AVIGILON and VIGILON marks is the word VIGIL, where the standard definition includes,
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`“keeping watch”, which is highly descriptive of Opposer’s security related products.
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`31. Finally, upon information and belief, there has been no confusion over the entire lifespan of
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`Opposer’s mark despite the concurrent use of the Mark and other similar marks, and there is no
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`evidence that Opposer has attempted to enforce its trademark rights by attempting to limit third
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`parties’ use of the VIGILON marks. As shown herein, given the weakness of the AVIGILON
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`mark, the descriptive nature of the AVIGILON mark, and the preceding and concurrent use of
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`others in similar fields using the VIGILON mark, it is improbable that Applicant’s use of its
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`Mark with goods and services that have no relation to Opposer’s goods and services is likely to
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`create any confusion.
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`
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`Affirmative Defenses
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`First Affirmative Defense
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`Opposer fails to state a claim upon which relief can be granted.
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`Second Affirmative Defense
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`There is no likelihood of confusion, mistake or deception because, inter alia, the Mark and the
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`Opposer’s mark are not confusingly similar.
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`
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`Page 7 of 10
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`Answer to Opposition
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`

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`Counterclaim to Cancel Registration
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`1. Applicant repeats and realleges each and every allegation set forth in the foregoing paragraphs as
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`full set forth herein.
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`2. Applicant seeks cancellation of Opposer’s registration (US Reg. No. 3,595,197) issued March 24,
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`2009 for the mark AVIGILON in International Classes 009, 037, 042 and 045 (“Opposer’s
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`Registration”).
`
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`3. Reiterating the point in ¶¶26-29 above, Applicant notes that WaterCove’s VIGILON mark was
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`registered in the same class of goods as the Opposer’s Registration and both filing and use dates
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`preceded Opposer’s Registration. It is upon information and belief that Opposer was aware of
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`WaterCove’s registration at the time of filing for the registration of AVIGILON and that the
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`Opposer knew that others had the right to use and were using the VIGILON mark as the name of
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`the product(s). It is upon further information and belief that Opposer was aware of Vigilon Inc.
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`and their use of the Vigilon name at the time of filing for the registration of AVIGILON.
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`Therefore, Opposer misrepresented in its declaration when filing its application for the Opposer’s
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`Registration, that others had right to use and were using the mark, either in the identical form or
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`in such near resemblance as to be likely, when used in connection with the goods/services of such
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`other person, to cause confusion or mistake, or to deceive” and that the signed statement to the
`contrary in the declaration was “a misrepresentation of fact.”1 Therefore, Opposer’s Registration
`was obtained fraudulently and should be cancelled as such.
`
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`4. Further, it is upon information and belief that Opposer, at the time of filing for the registration of
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`AVIGILON and again at the time of filing of the §8 and §15 declarations associated with
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`Opposer’s Registration, Opposer has not provided the services identified in the Opposer’s
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`Registration for International Class 045, namely, “Electronic monitoring services for security,
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`namely, closed circuit television and video surveillance monitoring, image analysis and image
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`processing; security consulting, namely, closed circuit television and video surveillance system
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`appraisals and recommendation.” (See, Exhibit E).
`
`
`
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`1 Bart Schwartz International Textiles, Ltd. v. Federal Trade Com., 289 F.2d 665, 671, 129 USPQ 258, 260 (CCPA
`1961)
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`Answer to Opposition
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`Page 8 of 10
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`

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`5. For the foregoing reasons, Applicant believes that it will be damaged by the continued
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`registration of the mark shown in Opposer’s Registration.
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`WHEREFORE, Applicant prays as follows:
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`(a) this Opposition is dismissed;
`(b) that US Registration No. 3,595,197 be cancelled; and
`(c) a registration for the term VIGILON be issued to the Applicant.
`
`
`
`Please direct all communications regarding this matter to the undersigned attorney for the
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`Applicant. This Answer and Counterclaim is being file by the undersigned attorney, duly
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`authorized to represent the Applicant in this proceeding. Applicant is submitting the statutory
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`filing fees of $1,200, for its counterclaim for cancellation of Opposer’s Registration, via credit
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`card. Please charge any additional fees due in connection with this document to Deposit Account
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`No. 50-5761.
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`Correspondence Address
`
`
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`Respectfully submitted,
`
`Docket Administrator
`James M. Smedley LLC
`776 Mountain Blvd. STE 105
`Watchung, NJ 07069
`
`
`
`
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`
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`/James M. Smedley/________
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`James Michael Smedley, Esq.
`Attorney for Applicant
`Dated: 7/30/2015
`
`Answer to Opposition
`
`Page 9 of 10
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`

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`CERTIFICATE OF SERVICE
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`
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`This is to certify that on July 30, 2015, a true and correct copy of the above referenced
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`Answer was served on Opposer, through Opposer’s authorized attorney, Jacqueline M. Lesser.,
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`via express mail to:
`
`Jacqueline M. Lesser
`Baker & Hostetler LLP
`2929 Arch Street
`Philadelphia, PA 19104-2891
`
`Respectfully submitted,
`
`/James M. Smedley/________
`
`James Michael Smedley, Esq.
`
`
`
`
`
`Answer to Opposition
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`Page 10 of 10
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`

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`EXHIBIT A
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`
`
`Contents
`Avigilon Goods and Services ......................................................................................................................... 2
`
`High Definition Surveillance ...................................................................................................................... 2
`
`Access Control ........................................................................................................................................... 3
`
`Video Analytics .......................................................................................................................................... 4
`
`Avigilon Company ......................................................................................................................................... 5
`
`Avigilon Marketing ........................................................................................................................................ 6
`
`Products .................................................................................................................................................... 6
`
`Market ....................................................................................................................................................... 6
`
`Trade Channels ......................................................................................................................................... 7
`
`Sample Trade Ad ....................................................................................................................................... 8
`
`Avigilon Pricing .............................................................................................................................................. 9
`
`Avigilon Educating Sophisticated Buyers .................................................................................................... 14
`
`Other Goods and Services Using VIGILON .................................................................................................. 15
`
`Exhibit – Vigilon Inc. - VIGILON ............................................................................................................... 15
`
`Exhibit – Vigilon Inc. – VIGILON .............................................................................................................. 16
`
`Exhibit – Honeywell VIGILON .................................................................................................................. 17
`
`System Components ........................................................................................................................... 18
`
`Exhibit – WaterCove Networks - VIGILON .............................................................................................. 19
`
`
`
`Exhibit A - page 1
`
`

`
`Avigilon Goods and Services
`
`High Definition Surveillance
`
`
`
`
`
`
`Source: http://avigilon.com/products/
`Retrieved: 1/23/2015
`
`
`
`Exhibit A - page 2
`
`

`
`Access Control
`
`
`
`Source: http://avigilon.com/products/
`Retrieved: 1/23/2015
`
`
`
`
`
`Exhibit A - page 3
`
`

`
`Video Analytics
`
`Exhibit A - page 4
`
`
`
`
`
`Source: http://avigilon.com/products/
`Retrieved: 1/23/2015
`
`
`
`

`
`
`
`Exhibit A - page 5
`
`Avigilon Company
`
`
`
`Source: http://avigilon.com/about/
`Retrieved: 1/23/2015
`
`

`
`Avigilon Marketing
`
`Products
`
`
`
`Market
`
`
`
`
`
`
`
`Exhibit A - page 6
`
`

`
`Trade Channels
`
`
`
`
`
`Source: http://ir.avigilon.com/files/doc_presentations/Avigilon-Investor-Presentation-January-2015-
`FINAL-v9.pdf
`Retrieved: 1/26/2015
`
`
`
`
`
`Exhibit A - page 7
`
`

`
`Sample Trade Ad
`
`Source: http://www.indiangaming.com/istore/Sep12_Avigilon.pdf
`Retrieved: 1/26/2015
`
`
`
`
`
`
`
`Exhibit A - page 8
`
`

`
`Avigilon Pricing
`
`
`
`Exhibit A - page 9
`
`

`
`
`
`
`
`Exhibit A - page 10
`
`

`
`
`
`Exhibit A - page 11
`
`

`
`
`
`Exhibit A - page 12
`
`

`
`
`
`Source: https://www.gsaadvantage.gov/ref_text/GS07F0481X/0MMBN2.2SDK1T_GS-07F-
`0481X_TERMS22.PDF, pages 9-13
`Retrieved: 1/23/2015
`
`
`
`
`
`
`
`Exhibit A - page 13
`
`

`
`Avigilon Educating Sophisticated Buyers
`
`
`
`Exhibit A - page 14
`
`Source: http://avigilon.com/white-papers/
`Retrieved: January 23, 2015
`
`
`
`

`
`Other Goods and Services Using VIGILON
`
`Exhibit – Vigilon Inc. - VIGILON
`
`
`Source: http://www.fruitengine.com/vigilon/security_systems.html
`
`Retrieved: 1/25/2015
`
`
`
`
`
`
`
`Exhibit A - page 15
`
`

`
`Exhibit – Vigilon Inc. – VIGILON
`
`
`
`Source: http://investing.businessweek.com/research/stocks/private/snapshot.asp?privcapId=11882410
`Retrieved: 1/29/2015
`
`
`
`
`
`
`
`Exhibit A - page 16
`
`

`
`Exhibit – Honeywell VIGILON
`
`Source: http://www.honeywelllifesafety-mea.com/brands/gent/products/analogue-addressable-1-6-
`loop/detail/vigilon-system-overview/
`Retrieved: 1/29/2015
`
`
`
`
`
`
`
`Exhibit A - page 17
`
`

`
`System Components
`
`
`
`Source: http://gent.co.uk/downloads/products/specification_115.pdf
`Retrieved: 1/29/2015
`
`
`
`
`
`Exhibit A - page 18
`
`

`
`Exhibit – WaterCove Networks - VIGILON
`
` G
`
` & S: telecommunication equipment, namely, routers, switches and servers; computer programs for use
`in telecommunications applications, namely, for facilitating link, transport and process level
`communications.
`
`Source: http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:r0ano0.2.5
`Retrieved 1/26/2015
`
`
`
`
`
`Exhibit A - page 19
`
`

`
`EXHIBIT B
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`*76630881*
`
`RETURN ADDRESS:
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`Please provide in all correspondence:
`
`1. Filing date, serial number, mark and
` applicant's name.
`2. Date of this Office Action.
`3. Examining Attorney's name and
` Law Office number.
`4. Your telephone number and e-mail
`address.
`
`
`
` SERIAL NO: 76/630881
`
`
`
` APPLICANT: Avigilon Corporation
`
`
`
`
` CORRESPONDENT ADDRESS:
` ANN CARLSEN
` COASTAL TRADEMARK SERVICES
` P.O. BOX 12109
` VANCOUVER, BRITISH COLUMBIA
` CANADA V6B 4N6
`
` MARK: AVIGILON
`
` CORRESPONDENT’S REFERENCE/DOCKET NO : N/A
`
`
`
`
`
` CORRESPONDENT EMAIL ADDRESS:
`
`
`OFFICE ACTION
`
`
`RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A
`PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-
`MAILING DATE.
`
`
`
`Serial Number 76/630881
`
`Search Results
`
`The Office records have been searched and no similar registered or pending mark has been found that
`would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Before
`the application can proceed to publication, however, certain informalities must be addressed.
`
`Identification of Goods/Recitation of Services-Indefinite and Overbroad Wording
`
`Much of the wording in the identification of goods/recitation of services needs clarification because it is
`unspecific and may require registration in additional classes. Applicant may adopt the following
`identification, if accurate:
`
`Security surveillance hardware, namely surveillance cameras; environmental enclosures, namely
`structures to protect cameras from outdoor elements and tampering; optical lenses for closed circuit
`television and video surveillance; security software, namely user and/or operator software for control and
`
`EXHIBIT B
`
`

`
`monitoring of live images from security surveillance cameras both on a local area network and remotely
`from the Internet and software for automated recording, storage, retrieval and enhancement of images
`from security surveillance cameras in International Class 009; and/or
`
`Motion sensitive security lights in International Class 011; and/or
`
`Installation and repair of security systems in International Class 037; and/or
`
`Custom design and engineering of closed circuit television security systems in International Class 042;
`and/or
`
`Electronic monitoring services for security, namely, closed circuit television and video surveillance
`monitoring, image analysis and image processing; security consulting services, namely, closed circuit
`television and video surveillance system appraisals and recommendations in International Class 045.
`TMEP §1402.01.
`
`Please note that, while the identification of goods/recitation of services may be amended to clarify or limit
`the goods/services, adding to the goods/services or broadening the scope of the goods/services is not
`permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to
`include goods/services that are not within the scope of the goods set forth in the present identification.
`
`
`ID Manual Online
`
`For assistance with identifying goods and/or services in trademark applications, please see the online
`searchable Manual of Acceptable Identifications of Goods and Services at
`http://tess2.uspto.gov/netahtml/tidm.html.
`
`Multiple Classes
`
`If applicant prosecutes this application as a combined, or multiple-class application, then applicant must
`comply with each of the following for those goods and/or services based on intent to use the mark in
`commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section
`44(e):
`
`
`(1) Applicant must list the goods and/or services by international class with th