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 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87905831 |
LAW OFFICE ASSIGNED |
LAW OFFICE 108 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/87905831/mark.png |
LITERAL ELEMENT |
S |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
In her Office Action dated July 23, 2018, the Examining Attorney refused registration based on likelihood of confusion with the
marks in U.S. Registrations Nos. 4398583, 4508771, and 5229853.
The Examining Attorney also provided information on the prior-pending application for S Design (Serial No. 87276955) as a potential barrier to registration.
Pursuant to the Examining Attorney’s instructions, Applicant has recorded an assignment of the marks in US Registrations Nos. 4398583 and 4508771 and US Application Serial No.
87276955 with the USPTO’s Assignment Recordation Branch., Submitted along with this response is a copy of the Assignment from Shazam Entertainment Ltd. to Apple Inc. along with the Trademark
Assignment Cover Sheet as filed on January 14, 2019. US Registration No. 5229853 has also been assigned from Shazam Entertainment Limited to Apple Inc. However, because US Registration
No. 5229853 is the result of extension of an International Registration, Apple submitted assignment documentation with the World Intellectual Property Organization. Submitted along with this
response is a printout of the New Holder/Representative of an International Registration. In addition, Applicant notes that on January 4, 2019, the USPTO database record was updated to evidence
the ownership change from Shazam Entertainment Ltd. to Apple Inc.
Thus, all of the registrations listed as likely to cause confusion with the applied-for mark have been assigned to Applicant.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and allow the instant application to proceed to
publication. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_1721810395-20190122170456902756_._SHAZAM_assignments_20190114.pdf |
CONVERTED PDF FILE(S)
(6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0005.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0007.JPG |
ORIGINAL PDF FILE |
evi_1721810395-20190122170456902756_._SHAZAM_trademark_assignment_cover_sheet.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0008.JPG |
ORIGINAL PDF FILE |
evi_1721810395-20190122170456902756_._Shazam_Logo__US_5229853__IR_Change_of_Ownership.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0009.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\879\058\87905831\xml5\ROA0010.JPG |
DESCRIPTION OF EVIDENCE FILE |
1. copy of Assignment from Shazam Entertainment Ltd. to Apple Inc. 2. copy of Trademark Assignment Cover Sheet as filed 3. printout of New
Holder/Representative of an International Registration for US Reg. No. 5229853 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Kimberly Eckhart/ |
SIGNATORY'S NAME |
Kimberly Eckhart |
SIGNATORY'S POSITION |
Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER |
408-783-6811 |
DATE SIGNED |
01/22/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Jan 22 18:31:49 EST 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0190122183149724110-87905
831-620f85ee88dfb3a478169
6ffcb16118df1fb5d717a572f
77afb8e98ac54d5ba-N/A-N/A
-20190122170456902756 |
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 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
87905831 S (Stylized and/or with Design, see http://uspto.report/TM/87905831/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In her Office Action dated July 23, 2018, the Examining Attorney refused registration based on likelihood of confusion with the marks in U.S. Registrations Nos. 4398583, 4508771,
and 5229853.
The Examining Attorney also provided information on the prior-pending application for S Design (Serial No. 87276955) as a potential barrier to registration.
Pursuant to the Examining Attorney’s instructions, Applicant has recorded an assignment of the marks in US Registrations Nos. 4398583 and 4508771 and US Application Serial No.
87276955 with the USPTO’s Assignment Recordation Branch., Submitted along with this response is a copy of the Assignment from Shazam Entertainment Ltd. to Apple Inc. along with the Trademark
Assignment Cover Sheet as filed on January 14, 2019. US Registration No. 5229853 has also been assigned from Shazam Entertainment Limited to Apple Inc. However, because US Registration
No. 5229853 is the result of extension of an International Registration, Apple submitted assignment documentation with the World Intellectual Property Organization. Submitted along with this
response is a printout of the New Holder/Representative of an International Registration. In addition, Applicant notes that on January 4, 2019, the USPTO database record was updated to evidence
the ownership change from Shazam Entertainment Ltd. to Apple Inc.
Thus, all of the registrations listed as likely to cause confusion with the applied-for mark have been assigned to Applicant.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and allow the instant application to proceed to
publication.
EVIDENCE
Evidence in the nature of 1. copy of Assignment from Shazam Entertainment Ltd. to Apple Inc. 2. copy of Trademark Assignment Cover Sheet as filed 3. printout of New Holder/Representative of an
International Registration for US Reg. No. 5229853 has been attached.
Original PDF file:
evi_1721810395-20190122170456902756_._SHAZAM_assignments_20190114.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_1721810395-20190122170456902756_._SHAZAM_trademark_assignment_cover_sheet.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_1721810395-20190122170456902756_._Shazam_Logo__US_5229853__IR_Change_of_Ownership.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
SIGNATURE(S)
Response Signature
Signature: /Kimberly Eckhart/ Date: 01/22/2019
Signatory's Name: Kimberly Eckhart
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 408-783-6811
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 87905831
Internet Transmission Date: Tue Jan 22 18:31:49 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019012218314972
4110-87905831-620f85ee88dfb3a4781696ffcb
16118df1fb5d717a572f77afb8e98ac54d5ba-N/
A-N/A-20190122170456902756