Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 77172511 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
This responds to the Examining Attorney’s July 19, 2007 Office Action.  In that Office Action, the Examining Attorney required Applicant to amend certain goods in the recitation.  In this response, Applicant amends certain goods to address the Examining Attorney’s concerns, as discussed below.

Proposed Amendments
 
“Computer gaming machines”

The Examining Attorney found “computer gaming machines” wording indefinite.   Applicant respectfully disagrees as “gaming machines” alone is an acceptable identification and “computer gaming machines” is arguably narrower in scope.   Applicant therefore respectfully requests that the Examining Attorney reconsider her position in relation to this wording.
 
“Operating system programs and utilities”

The Examining Attorney found “Operating system programs and utilities” wording indefinite.   Applicant has amended the recitation to: “operating system programs; computer utility programs for computer operating systems”.
 
“Parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials”

Applicant has amended the recitation to: “parts and accessories for mobile telephones, namely mobile telephone covers, mobile telephone cases, mobile telephone cases made of leather or imitations of leather, mobile telephone covers made of cloth or textile materials, mobile telephone holsters, mobile telephone batteries, mobile telephone battery chargers, headsets for mobile telephones, devices for hands-free use of mobile telephones”.
 
“Car audio apparatus”

Applicant has amended the recitation to: “audio equipment for vehicles, namely stereos, speakers, amplifiers, equalizers, crossovers, speaker housings, subwoofers, MP3 players, stereo connectors for MP3 players”.
 
“A full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files”

Applicant has amended the recitation to: “a full line of electronic and mechanical parts and fitting for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files, namely headphones, microphones, remote controls, batteries, battery chargers, devices for hands-free use, keyboards, adapters, antenna and amplifiers”.
 
“Digital data”

Applicant has amended the recitation to:  “digital media”.
 
“Electronic mail”

Applicant believes the references to electronic mail in “electronic mail and messaging software” and “handheld and mobile digital electronic devices for the sending and receiving of telephone calls, electronic mail and other digital data” cover software and handheld and mobile digital electronic devices meant for facilitating electronic mail which are acceptable under the Trademark ID Manual in International Class 9.   Applicant therefore respectfully requests that the Examining Attorney reconsider her objection to this particular wording.
 
“Telecommunications software”

Applicant has amended the recitation to: “telecommunications software for connecting wireless devices, mobile telephones, handheld digital electronic devices, computers, laptop computers, computer network users, global computer networks”.
 
“Downloadable audio and video files, movies, ring tones, video games, television programs, pod casts and audio books via the internet and wireless devices”

Applicant has amended the recitation to: “downloadable audio and video files, movies, ring tones, video games, televisions programs, pod casts and audio books via the internet and wireless devices concerning music, movies, videos, television, celebrities, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, current events and topics of general interest”.
 
List of all goods as proposed to be amended (with changes in bold):
 
Computer hardware; computer hardware, namely, server, desktop, laptop and notebook computers; computer memory hardware; computer disc drives; optical disc drives; computer hardware, software and computer peripherals for communication between multiple computers and between computers and local and global computer networks; computer networking hardware; set top boxes; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content; computer monitors; liquid crystal displays; flat panel display monitors; computer keyboards, cables, modems; computer mice; electronic docking stations; stands specially designed for holding computer hardware and portable and handheld digital electronic devices; batteries; rechargeable batteries; battery chargers; battery packs; power adapters for computers; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for computers and portable and handheld digital electronic devices; headphones and earphones; stereo headphones; in-ear headphones; stereo amplifier and speaker base stations; stereo speakers; audio speakers; microphones; audio equipment for vehicles, namely stereos, speakers, amplifiers, equalizers, crossovers, speaker housings, subwoofers, MP3 players, stereo connectors for MP3 players; sound systems comprising remote controls, amplifiers, loudspeakers and components thereof; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; electronic memory card readers; personal digital assistants; portable digital audio and video players; electronic organizers; cameras; telephones; mobile phones; videophones; computer gaming machines, namely stand-alone video gaming machines and dedicated gaming consoles; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, electronic mail and other digital media; MP3 and other digital format audio and video players; portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; a full line of electronic and mechanical parts and fitting for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files, namely headphones, microphones, remote controls, batteries, battery chargers, devices for hands-free use, keyboards, adapters, antenna and amplifiers; parts and accessories for mobile telephones, namely mobile telephone covers, mobile telephone cases, mobile telephone cases made of leather or imitations of leather, mobile telephone covers made of cloth or textile materials, mobile telephone holsters, mobile telephone batteries, mobile telephone battery chargers, headsets for mobile telephones, devices for hands-free use of mobile telephones; carrying cases, sacks, and bags, all for use with computers and portable and handheld digital electronic devices; operating system programs; computer utility programs for computer operating systems; a full line of computer software for business, home, education, and developer use; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer programs for personal information management; database management software; character recognition software; electronic mail and messaging software; telecommunications software for connecting wireless devices, mobile telephones, handheld digital electronic devices, computers, laptop computers, computer network users, global computer networks; database synchronization software; computer programs for accessing, browsing and searching online databases; computer software to develop other computer software; computer software for use as a programming interface; computer software for use in network server sharing; local and wide area networking software; computer software for matching, correction, and reproduction of color; computer software for use in digital video and audio editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network; computer software for use in word processing and database management; word processing software incorporating text, spreadsheets, still and moving images, sounds and clip art; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video, still images and other digital media; computer software for analyzing and troubleshooting other computer software; children's educational software; computer game software; computer graphics software; computer search engine software; website development software; computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer programs for file maintenance and data recovery; computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management; electronic mail and messaging software; computer programs for accessing, browsing and searching online databases; computer software and firmware for operating system programs; blank computer storage media; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; downloadable electronic publications in the nature of books, magazines, pamphlets, brochures, newsletters, journals and magazines in the fields of sporting and cultural events, computer hardware and software applications, telecommunications, K-12 education and university-level subjects, education, music, film, video games, and a wide range of topics of general interest; downloadable audio and video files, movies, ring tones, video games, television programs, pod casts and audio books via the internet and wireless devices concerning music, movies, videos, television, celebrities, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, current events and topics of general interest; instructional manuals packaged in association with the above.

Applicant believes it has addressed all concerns raised by the Examining Attorney.  Applicant notes that the Examining Attorney has searched the Office records and found no similar registered or pending mark.  As Applicant is not aware of any further issues barring publication, Applicant respectfully requests such action at an early date.
 

EVIDENCE
Evidence in the nature of PDF of Office Action Response Arguments has been attached.
Original PDF file:
evi_1719314206-200136729_._APPLE_Word_Mark_-_OA_Response_Class_9.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware; computer hardware, namely, server, desktop, laptop and notebook computers; computer memory hardware; computer disc drives; optical disc drives; computer hardware, software and computer peripherals for communication between multiple computers and between computers and local and global computer networks; computer networking hardware; set top boxes; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content; computer monitors; liquid crystal displays; flat panel display monitors; computer keyboards, cables, modems; computer mice; electronic docking stations; stands specially designed for holding computer hardware and portable and handheld digital electronic devices; batteries; rechargeable batteries; battery chargers; battery packs; power adapters for computers; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for computers and portable and handheld digital electronic devices; headphones and earphones; stereo headphones; in-ear headphones; stereo amplifier and speaker base stations; stereo speakers; audio speakers; microphones; car audio apparatus; sound systems comprising remote controls, amplifiers, loudspeakers and components thereof; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; electronic memory card readers; personal digital assistants; portable digital audio and video players; electronic organizers; cameras; telephones; mobile phones; videophones; computer gaming machines; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, electronic mail and other digital data; MP3 and other digital format audio and video players; portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; a full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; carrying cases, sacks, and bags, all for use with computers and portable and handheld digital electronic devices; operating system programs and utilities; a full line of computer software for business, home, education, and developer use; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer programs for personal information management; database management software; character recognition software; electronic mail and messaging software; telecommunications software; database synchronization software; computer programs for accessing, browsing and searching online databases; computer software to develop other computer software; computer software for use as a programming interface; computer software for use in network server sharing; local and wide area networking software; computer software for matching, correction, and reproduction of color; computer software for use in digital video and audio editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network; computer software for use in word processing and database management; word processing software incorporating text, spreadsheets, still and moving images, sounds and clip art; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video, still images and other digital data; computer software for analyzing and troubleshooting other computer software; children's educational software; computer game software; computer graphics software; computer search engine software; website development software; computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer programs for file maintenance and data recovery; computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management; electronic mail and messaging software; computer programs for accessing, browsing and searching online databases; computer software and firmware for operating system programs; blank computer storage media; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; downloadable electronic publications in the nature of books, magazines, pamphlets, brochures, newsletters, journals and magazines in the fields of sporting and cultural events, computer hardware and software applications, telecommunications, K-12 education and university-level subjects, education, music, film, video games, and a wide range of topics of general interest; downloadable audio and video files, movies, ring tones, video games, television programs, pod casts and audio books via the internet and wireless devices; instructional manuals packaged in association with the above
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)).

Proposed: Class 009 for Computer hardware; computer hardware, namely, server, desktop, laptop and notebook computers; computer memory hardware; computer disc drives; optical disc drives; computer hardware, software and computer peripherals for communication between multiple computers and between computers and local and global computer networks; computer networking hardware; set top boxes; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content; computer monitors; liquid crystal displays; flat panel display monitors; computer keyboards, cables, modems; computer mice; electronic docking stations; stands specially designed for holding computer hardware and portable and handheld digital electronic devices; batteries; rechargeable batteries; battery chargers; battery packs; power adapters for computers; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for computers and portable and handheld digital electronic devices; headphones and earphones; stereo headphones; in-ear headphones; stereo amplifier and speaker base stations; stereo speakers; audio speakers; microphones; audio equipment for vehicles, namely stereos, speakers, amplifiers, equalizers, crossovers, speaker housings, subwoofers, MP3 players, stereo connectors for MP3 players; sound systems comprising remote controls, amplifiers, loudspeakers and components thereof; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; electronic memory card readers; personal digital assistants; portable digital audio and video players; electronic organizers; cameras; telephones; mobile phones; videophones; computer gaming machines, namely stand-alone video gaming machines and dedicated gaming consoles; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, electronic mail and other digital media; MP3 and other digital format audio and video players; portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; a full line of electronic and mechanical parts and fitting for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files, namely headphones, microphones, remote controls, batteries, battery chargers, devices for hands-free use, keyboards, adapters, antenna and amplifiers; parts and accessories for mobile telephones, namely mobile telephone covers, mobile telephone cases, mobile telephone cases made of leather or imitations of leather, mobile telephone covers made of cloth or textile materials, mobile telephone holsters, mobile telephone batteries, mobile telephone battery chargers, headsets for mobile telephones, devices for hands-free use of mobile telephones; carrying cases, sacks, and bags, all for use with computers and portable and handheld digital electronic devices; operating system programs; computer utility programs for computer operating systems; a full line of computer software for business, home, education, and developer use; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer programs for personal information management; database management software; character recognition software; electronic mail and messaging software; telecommunications software for connecting wireless devices, mobile telephones, handheld digital electronic devices, computers, laptop computers, computer network users, global computer networks; database synchronization software; computer programs for accessing, browsing and searching online databases; computer software to develop other computer software; computer software for use as a programming interface; computer software for use in network server sharing; local and wide area networking software; computer software for matching, correction, and reproduction of color; computer software for use in digital video and audio editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network; computer software for use in word processing and database management; word processing software incorporating text, spreadsheets, still and moving images, sounds and clip art; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video, still images and other digital media; computer software for analyzing and troubleshooting other computer software; children's educational software; computer game software; computer graphics software; computer search engine software; website development software; computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer programs for file maintenance and data recovery; computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management; electronic mail and messaging software; computer programs for accessing, browsing and searching online databases; computer software and firmware for operating system programs; blank computer storage media; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; downloadable electronic publications in the nature of books, magazines, pamphlets, brochures, newsletters, journals and magazines in the fields of sporting and cultural events, computer hardware and software applications, telecommunications, K-12 education and university-level subjects, education, music, film, video games, and a wide range of topics of general interest; downloadable audio and video files, movies, ring tones, video games, television programs, pod casts and audio books via the internet and wireless devices concerning music, movies, videos, television, celebrities, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, current events and topics of general interest; instructional manuals packaged in association with the above.
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)).

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: /Thomas R. La Perle/      Date: 09/11/2007
Signatory's Name: Thomas R. La Perle
Signatory's Position: Senior Intellectual Property Counsel

Response Signature
Signature: /Thomas R. La Perle/     Date: 09/11/2007
Signatory's Name: Thomas R. La Perle
Signatory's Position: Senior Intellectual Property Counsel

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: 77172511
Internet Transmission Date: Tue Sep 11 20:33:34 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007091120333407
6434-77172511-4009be7ffdc02cb2e3b6c2ceaf
bbeebc7f-N/A-N/A-20070911200136729377