Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76597546 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The applicant respectfully requests that the suspension be lifted and the mark be registered in due course.  With respect to Application Serial No. 78/188609, the applicant Kodansha LTD., is seeking registration of the mark "Initial D" in connection with the production of animated and live action television shows and television programs and the distribution and production of said programs on video cassettes and dvds.  Applicant contends that there is no likelihood of confusion between its mark and Kodansha LTD.'s mark.  Applicant is seeking registration of electronic apparatus, namely, DVD players, video cameras, audio speakers, video and computer monitors, television monitors, etc.  Applicant does not sell or produce videocassettes or DVDs.  Applicant's and Kodansha LTD.'s goods are not likely to be be sold within the same channels of trade and also do not target the same consumers.  

Moreover, Applicant's date of first use is prior to the Kodansha LTD.'s filing date of November 25, 2005.  Kodansha LTD. has filed a request for the third extension of time to file a statement of use.  Applicant has seniority of use and therefore respectfully requests that the suspension of the above-referenced application be lifted and the mark be registered in due course.

Finally, Applicant has obtained registration of the word mark "Initial," registration number 3004684, in connection with goods similar to those listed in this applicant.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for APPARATUS FOR RECORDING AND TRANSMISSION OF SOUND AND IMAGES; NAMELY, DVD MACHINES, DIGITAL CONSUMER ENTERTAINMENT UNITS, DIGITAL MUSIC RECORDERS AND PLAYERS, PORTABLE VIDEO AND AUDIO ENTERTAINMENT UNITS, VIDEO AND AUDIO ENTERTAINMENT UNITS FOR VEHICLES, AUDIO SPEAKERS, HOME THEATER SYSTEMS, VIDEO OR COMPUTER MONITORS, LCD TELEVISIONS, LCD TELEVISION COMBINED WITH DVD MACHINE, AND RELATED ACCESSORIES; NAMELY, POWER CABLES AND ADAPTERS BATTERIES, CARRYING CASES, AV CABLES, REMOTE CONTROLS, AND HEADPHONES
Original Filing Basis: 1(a).
Proposed: Class 009 for APPARATUS FOR RECORDING AND TRANSMISSION OF SOUND AND IMAGES; NAMELY, DVD MACHINES, DIGITAL CONSUMER ENTERTAINMENT UNITS IN THE NATURE OF DIGITAL MUSIC RECORDERS AND PLAYERS, PORTABLE VIDEO AND AUDIO ENTERTAINMENT UNITS IN THE NATURE OF DVD PLAYERS, VIDEO AND AUDIO ENTERTAINMENT UNITS FOR VEHICLES IN THE NATURE OF DVD PLAYERS FOR CARS, AUDIO SPEAKERS, VIDEO OR COMPUTER MONITORS, LCD TELEVISIONS, LCD TELEVISION COMBINED WITH DVD MACHINE, AND RELATED ACCESSORIES; NAMELY, POWER CABLES AND ADAPTERS BATTERIES, CARRYING CASES, AV CABLES, REMOTE CONTROLS, AND HEADPHONES

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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: /denton/      Date: 01/06/2006
Signatory's Name: Denton Chang
Signatory's Position: Duly authorized officer

Response Signature

Signature: /Casondra K. Kevorkian/     Date: 01/06/2006
Signatory's Name: Casondra K. Kevorkian
Signatory's Position: Attorney for Applicant
        
Serial Number: 76597546
Internet Transmission Date: Fri Jan 06 17:36:16 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20060106173616
491056-76597546-320f3d2959f76a35b2b461ae
516d7efec2-N/A-N/A-20060106134719673226