| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76586017 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of: BFG Technologies, Inc. Serial No.: 76/586017 Trademark Law Office No. 105 Filed: April 9, 2004 Examining Attorney: Verna Beth Ririe Mark: OC
BOX RESPONSES -- NO FEE Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
RESPONSE TO OFFICE ACTION MAILED NOVEMBER 1, 2004
Dear Examiner: This submission respectfully responds to the first office action mailed November 1, 2004.
Merely Descriptive
We respectfully disagree that the mark "OC" is merely descriptive. The mark "OC" does not mean "optical carrier" and does not describe or identify the Applicant's goods in any way; moreover the Applicant did not even know what "optical carrier" meant because to the Applicant the mark is entirely arbitrary. Since the mark "OC" is not merely descriptive, we respectfully request that the mark be registered.
Fails to Function as Trademark We respectfully disagree that the mark "OC" fails to function as a trademark, since the mark "OC" is not merely descriptive. The mark "OC" does not merely provide information about the Applicant's goods, or describe the model or function of the Applicant's goods. In fact, the mark "OC" does not provide any information about the Applicant's goods nor does it describe in any way the model or function of the Applicant's goods. As described above, the mark "OC" is entirely arbitrary and does function as a trademark clearly projecting to purchasers the source of the Applicant's goods.
Drawing Differs from Specimens We respectfully disagree that the drawing "OC" differs from the specimens submitted. Although the specimen displays "BFG GeForce FX 5900XT OC", this properly displays the mark "OC". The mark "OC" is a separate mark and the Applicant does not wish to gain registration for "BFG", "GeForce", "FX", or "5900XT", even though the specimen illustrates it in conjunction with these other words separated by spaces. "GeForce" is a registered trademark of the NVIDIA Corporation and although it is displayed with "BFG GeForce FX 5900XT OC" it is still its own separate mark. Therefore, we respectfully believe the specimen properly displays the mark "OC" and does not differ from the drawing. Nevertheless, and without waiving prior arguments, please find the attached substitute specimens illustrating the "OC" mark by itself.
Substituting a Basis The Applicant does not wish to substitute its filing basis, as it has complied with the specimen requirement.
Conclusion As Applicant has fully responded to the Office Action, it now respectfully requests that its Application be published for opposition.
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| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| COMPUTER HARDWARE AND PERIPHERALS, NAMELY, VIDEO CIRCUIT BOARD CARDS, PRINTER CIRCUIT BOARD CARDS, CIRCUIT CARDS, ENCODED INTEGRATED CIRCUIT CARDS AND SMART CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATA, GRAPHICS CARDS, ENCODED ELECTRONIC CHIP CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATE, SOUND CARDS, VIDEO CARDS, PRINTED CIRCUIT BOARDS, ADD-IN CARDS FOR SOUND OR INTERFACE FUNCTIONS ON PRINTED CIRCUIT BOARDS, GRAPHIC CIRCUIT BOARDS, OPTICAL DRIVES, GAME PADS, HIGH SPEED GAME CARDS, VIDEO CIRCUIT BOARDS, MEMORY BOARDS AND INTERFACE BOARDS FOR MASS STORAGE | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 03/19/2004 |
| FIRST USE IN COMMERCE DATE | 03/19/2004 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| COMPUTER HARDWARE AND PERIPHERALS, NAMELY, VIDEO CIRCUIT BOARD CARDS, PRINTER CIRCUIT BOARD CARDS, CIRCUIT CARDS, ENCODED INTEGRATED CIRCUIT CARDS AND SMART CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATA, GRAPHICS CARDS, ENCODED ELECTRONIC CHIP CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATE, SOUND CARDS, VIDEO CARDS, PRINTED CIRCUIT BOARDS, ADD-IN CARDS FOR SOUND OR INTERFACE FUNCTIONS ON PRINTED CIRCUIT BOARDS, GRAPHIC CIRCUIT BOARDS, OPTICAL DRIVES, GAME PADS, HIGH SPEED GAME CARDS, VIDEO CIRCUIT BOARDS, MEMORY BOARDS AND INTERFACE BOARDS FOR MASS STORAGE | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 03/19/2004 |
| FIRST USE IN COMMERCE DATE | 03/19/2004 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\TICRS\EXPORT10\IMAGEOUT 10\765\860\76586017\xml1\ ROA0002.JPG |
| \\TICRS\EXPORT10\IMAGEOUT 10\765\860\76586017\xml1\ ROA0003.JPG | |
| SPECIMEN DESCRIPTION | Specimen 1- Photographed goods packaging- zoomed in on mark by itself Specimen 2- Photographed goods packaging- entire package |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The mark is presented in standard characters without claim to any particular font style, size, or color. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Rakesh M. Amin/ |
| SIGNATORY NAME | Rakesh M. Amin |
| SIGNATORY POSITION | Attorney of Record |
| SIGNATURE DATE | 04/29/2005 |
| RESPONSE SIGNATURE | /Rakesh M. Amin/ |
| SIGNATORY NAME | Rakesh M. Amin |
| SIGNATORY POSITION | Attorney of Record |
| SIGNATURE DATE | 04/29/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Apr 29 16:03:44 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200504 29160344461201-76586017-2 00aa7bb5cb19af11c6679b4eb 6fa369f27-N-N-20050429155 743746147 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76586017 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of: BFG Technologies, Inc. Serial No.: 76/586017 Trademark Law Office No. 105 Filed: April 9, 2004 Examining Attorney: Verna Beth Ririe Mark: OC
BOX RESPONSES -- NO FEE Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
RESPONSE TO OFFICE ACTION MAILED NOVEMBER 1, 2004
Dear Examiner: This submission respectfully responds to the first office action mailed November 1, 2004.
Merely Descriptive
We respectfully disagree that the mark "OC" is merely descriptive. The mark "OC" does not mean "optical carrier" and does not describe or identify the Applicant's goods in any way; moreover the Applicant did not even know what "optical carrier" meant because to the Applicant the mark is entirely arbitrary. Since the mark "OC" is not merely descriptive, we respectfully request that the mark be registered.
Fails to Function as Trademark We respectfully disagree that the mark "OC" fails to function as a trademark, since the mark "OC" is not merely descriptive. The mark "OC" does not merely provide information about the Applicant's goods, or describe the model or function of the Applicant's goods. In fact, the mark "OC" does not provide any information about the Applicant's goods nor does it describe in any way the model or function of the Applicant's goods. As described above, the mark "OC" is entirely arbitrary and does function as a trademark clearly projecting to purchasers the source of the Applicant's goods.
Drawing Differs from Specimens We respectfully disagree that the drawing "OC" differs from the specimens submitted. Although the specimen displays "BFG GeForce FX 5900XT OC", this properly displays the mark "OC". The mark "OC" is a separate mark and the Applicant does not wish to gain registration for "BFG", "GeForce", "FX", or "5900XT", even though the specimen illustrates it in conjunction with these other words separated by spaces. "GeForce" is a registered trademark of the NVIDIA Corporation and although it is displayed with "BFG GeForce FX 5900XT OC" it is still its own separate mark. Therefore, we respectfully believe the specimen properly displays the mark "OC" and does not differ from the drawing. Nevertheless, and without waiving prior arguments, please find the attached substitute specimens illustrating the "OC" mark by itself.
Substituting a Basis The Applicant does not wish to substitute its filing basis, as it has complied with the specimen requirement.
Conclusion As Applicant has fully responded to the Office Action, it now respectfully requests that its Application be published for opposition.
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| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 009 for COMPUTER HARDWARE AND PERIPHERALS, NAMELY, VIDEO CIRCUIT BOARD CARDS, PRINTER CIRCUIT BOARD CARDS, CIRCUIT CARDS, ENCODED INTEGRATED CIRCUIT CARDS AND SMART CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATA, GRAPHICS CARDS, ENCODED ELECTRONIC CHIP CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATE, SOUND CARDS, VIDEO CARDS, PRINTED CIRCUIT BOARDS, ADD-IN CARDS FOR SOUND OR INTERFACE FUNCTIONS ON PRINTED CIRCUIT BOARDS, GRAPHIC CIRCUIT BOARDS, OPTICAL DRIVES, GAME PADS, HIGH SPEED GAME CARDS, VIDEO CIRCUIT BOARDS, MEMORY BOARDS AND INTERFACE BOARDS FOR MASS STORAGE | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 009 for COMPUTER HARDWARE AND PERIPHERALS, NAMELY, VIDEO CIRCUIT BOARD CARDS, PRINTER CIRCUIT BOARD CARDS, CIRCUIT CARDS, ENCODED INTEGRATED CIRCUIT CARDS AND SMART CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATA, GRAPHICS CARDS, ENCODED ELECTRONIC CHIP CARDS CONTAINING PROGRAMMING USED WITH TEXT, AUDIO, VIDEO, VOICE AND IMAGE DATE, SOUND CARDS, VIDEO CARDS, PRINTED CIRCUIT BOARDS, ADD-IN CARDS FOR SOUND OR INTERFACE FUNCTIONS ON PRINTED CIRCUIT BOARDS, GRAPHIC CIRCUIT BOARDS, OPTICAL DRIVES, GAME PADS, HIGH SPEED GAME CARDS, VIDEO CIRCUIT BOARDS, MEMORY BOARDS AND INTERFACE BOARDS FOR MASS STORAGE | |
| Section 1(a), Use in Commerce: The mark was first used at least as early as 03/19/2004 and first used in commerce at least as early as 03/19/2004, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 009. | |
| The specimen(s) submitted consists of Specimen 1- Photographed goods packaging- zoomed in on mark by itself Specimen 2- Photographed goods packaging- entire package. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Specimen-2 | |
| Additional Statements | |
| The mark is presented in standard characters without claim to any particular font style, size, or color. | |
| Declaration Signature |
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| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Rakesh M. Amin/ Date: 04/29/2005 | |
| Signatory's Name: Rakesh M. Amin | |
| Signatory's Position: Attorney of Record | |
| Response Signature | |
| Signature: /Rakesh M. Amin/ Date: 04/29/2005 | |
| Signatory's Name: Rakesh M. Amin | |
| Signatory's Position: Attorney of Record | |
| Serial Number: 76586017 | |
| Internet Transmission Date: Fri Apr 29 16:03:44 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20050429160344461201- 76586017-200aa7bb5cb19af11c6679b4eb6fa36 9f27-N-N-20050429155743746147 |
