Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77114255 has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

            Applicant :                                NEC Corporation of America.

 

            Serial No.:                                77/114,255

 

            Filed:                                        February 23, 2007

 

            Trademark:                               PIDPLUS

 

            Examining Attorney:                  Charles L. Jenkins, Jr.

 

            Law Office:                              105

 

            Our File Ref.:                            R0319-00026

 

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

 

 

RESPONSE TO OFFICE ACTION

            Applicant has carefully examined the Office Action dated December 31, 2008.  Please consider the following remarks in response.

SPECIMENS & DECLARATION

            Applicant has enclosed a specimen showing use of the mark PIDPLUS for the goods in Class 9.  Applicant has also submitted a signed Declaration pursuant to 37 C.F.R. § 2.20.

CONCLUSION

            Based on the foregoing, the application appears to be in order.  Accordingly, applicant respectfully requests that the application be permitted to proceed to publication.

 

 

 

Dated:  December 31, 2008

            New York, New York

 

I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.         /Inez P. Vega/     ­   Inez P. Vega   Dated:  December 31, 2008

DUANE MORRIS LLP       By:        /Eric W. McCormick/        ­           Gregory P. Gulia       Eric W. McCormick   1540 Broadway New York, New York  10036 (212) 692-1027   Attorneys for Applicant

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for use with fingerprint scanning technology
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 04/00/2007 and first used in commerce at least as early as 04/00/2007.

Proposed: Class 009 for Computer software for use with fingerprint scanning technology
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 04/00/2007. and first used in commerce at least as early as 04/00/2007.

Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of pages from instruction/installation brochure evidencing use of the mark.
For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to expiration of the filing deadline for filing a Statement of Use (SOU)."
Original PDF file:
SPU0-1214420254-101731038_._PIDPLUS.pdf
Converted PDF file(s) (17 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Specimen File14
Specimen File15
Specimen File16
Specimen File17

SIGNATURE(S)
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: /Gregory P. Gulia/      Date: 12/31/2008
Signatory's Name: Gregory P. Gulia
Signatory's Position: Attorney

Response Signature
Signature: /Gregory P. Gulia/     Date: 12/31/2008
Signatory's Name: Gregory P. Gulia
Signatory's Position: Attorney

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 77114255
Internet Transmission Date: Wed Dec 31 10:24:08 EST 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2008123110240881
7959-77114255-4304d4e8e473bf35dff7471d6d
8cf284674-N/A-N/A-20081231101731038495