TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

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PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 77120789 has been amended as follows:

ADDITIONAL STATEMENTS
This is a Request for Reconsideration After the Final Office Action mailed July 27, 2009. Registration of this application was previously refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on the cited Registration No. 3,006,315. However, registration maintenance documents were due to be filed for the cited registration, which if not timely filed, would result in cancellation under §8 or expiration under §9 of the cited registration. 37 C.F.R §2.67; TMEP §716.02(e). Thus, the application was suspended for 6 months to allow the Examining Attorney determine whether the cited registration would be canceled or expired and no longer be a bar to the registration of the pending application. In addition, the Applicant filed a cancellation proceeding against the cited U.S. Registration No. 3,006,315, which was captioned DIRECTV, Inc. v. Florida Marlins L.P., Cancellation No. 92050107. Pursuant to a Co-Existence Agreement between the parties, the cancellation proceeding was dismissed and terminated on July 8, 2009, and subsequently, the present Final Refusal was mailed on July 27, 2009. Remarks The Applicant’s application is rejected by the Examining Attorney for the reasons stated above. In the interim, the Applicant and the owner of the cited Registration No. 3,006,615, Florida Marlins LP (“Florida Marlins”), has negotiated and entered into a Co-Existence Agreement. The Applicant submits as Exhibit 1, a redacted copy of the signed and dated Trademark Co- Existence Agreement executed by both parties. Specific provisions have been redacted as being “Confidential.” The Co-Existence Agreement was effective on July 28, 2009. As reflected by the terms, the parties agree that there has been no likelihood of confusion between the marks, and should any confusion arise, the parties will cooperate with one another to eliminate such confusion. Thus, the Applicant respectfully submits that the Co-Existence Agreement is conclusive to establish that the use and registration of STRIKE ZONE CHANNEL for the services identified in Serial No. 77/120,789 is not likely to cause confusion with the cited Registration No. 3,006,315 for trademark STRIKE ZONE WWW.FLORIDAMARLINS.COM & Design. See, In re Four Seasons Hotels, Ltd., 987 F.2d 1565 (Fed. Cir. 1993). In light of the signed and submitted Co-Existence Agreement, the Applicant respectfully requests that the Examining Attorney withdraw the final refusal based on U.S. Registration No. 3,006,315. Accordingly, the Applicant respectfully requests that the Application be approved for publication.
Original PDF file:
M-2042272259-123530264_._Redacted_Agmt.pdf
Converted PDF file(s) (8 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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: /TSuzuki/      Date: 08/17/2009
Signatory's Name: Takehiko Suzuki
Signatory's Position: Attorney of record, California bar member

Request for Reconsideration Signature
Signature: /TSuzuki/     Date: 08/17/2009
Signatory's Name: Takehiko Suzuki
Signatory's Position: Attorney of record, California bar member

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 77120789
Internet Transmission Date: Mon Aug 17 14:24:59 EDT 2009
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.X-2009081714245936
3695-77120789-4304199beba8d1bbc871c8ab3a
0b2f3186-N/A-N/A-20090817123530264288