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. 77199024 has been amended as follows:

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

LIKELIHOOD OF CONFUSION - Registration 2,446,766:

This communication is in response to the Office Action sent on September 6, 2007.

The Office Action states that registration is refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), asserting that Applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2,446,766 for PEANUT READER as to be likely to cause confusion, to cause mistake, or to deceive.

The Office Action goes on to state that the marks of the parties are highly similar and that the goods and services of the parties are closely related in that they all involve software for wireless devices. 

Registration Cancelled by USPTO

Applicant respectfully requests that the refusal based on Registration No. 2,446,766 be withdrawn.  This registration was cancelled by the USPTO as of January 26, 2008 (see http://tarr.gov.uspto.report/tarr?regser=registration&entry=2446766).

 

Prior Pending Applications

Applicant understands that pending Application Serial Nos. 77051774, 77154010 and 77187197 may be cited by the USPTO for likelihood of confusion of these applications register and this case may be suspended pending final disposition of the earlier-filed applications. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Product research and development, design, technical consultation, in the fields of wireless communications, health, medicine and fitness for wireless communication devices, accessories, peripherals, and sensors; development of hardware and software for others for wireless communication, health, medical and fitness purposes
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 042 for Product research and development, design for others, and technical consultation related thereto, in the fields of wireless communications, health, medicine and fitness for wireless communication devices, accessories, peripherals, and sensors; development of computer hardware and software for others for wireless communication, health, medical and fitness purposes
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
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Dang M. Vo/     Date: 03/06/2008
Signatory's Name: Dang M. Vo
Signatory's Position: Patent Counsel, Associate

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: 77199024
Internet Transmission Date: Thu Mar 06 23:48:41 EST 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2008030623484140
3371-77199024-420db95bbd669d347385de7467
3ddb4eb-N/A-N/A-20080306234214759537