Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77558461 has been amended as follows:

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

AMENDMENT AND RESPONSE

            The Applicant, IAC/InterActiveCorp acknowledges receipt of the Office Action No. 1 sent on December 6, 2008, in connection with the above-referenced application.  Please consider the following Response to Office Action No. 1.

AMENDMENT

Please amend the identification of goods and services as follows:

Class 9:  Pursuant to the Examining Attorney's request, Applicant has further specified the language "pre-recorded CDs and DVDs."  Accordingly, please delete the present identification of goods in Class 9 in its entirety and substitute the following:

"Interactive video game and computer game programs; pre-recorded CDs and DVDs featuring music, spoken commentary, animation, educational content, and information in the field of general interest for children and youth, excluding content related to religious topics; backpacks and bags especially adapted for holding laptops and notebook computers."

Class 14:  Applicant deletes the reference to "key chains" in this Class.  Accordingly, please delete the present identification of goods in Class 14 in its entirety and substitute the following: 

"Clocks, jewelry and jewelry boxes, watches and collectable coins".

Class 16:  Pursuant to the Examining Attorney's request, Applicant has further specified the goods in this Class.  Accordingly, please delete the present identification of goods in Class 16 in its entirety and substitute the following:

"Notebooks, sticker and photo albums; blank and lined writing journals, school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighting markers, folders, notebooks, paper, writing grips, book marks, greeting and correspondence cards, note cards, business and name cards, and wrapping paper; children's books, comic books, posters and daily planners; toy and game cardboard and paper packaging, posters and art prints; iron-on decals; temporary tattoos."

Class 18:  Pursuant to the Examining Attorney's request, Applicant has further specified the goods in this Class.  Accordingly, please delete the present identification of goods in Class 18 in its entirety and substitute the following:

"Purses; all purpose carrying, sports, beach and school bags and backpacks; articles for travel namely, luggage, carrying cases, umbrellas and knapsacks; leather or imitation leather keychains; and souvenir bags."

Class 25:  The Examining Attorney has cited a third-party prior registration (Reg. No. 2564870) in Class 25 as a potential bar to registration of Applicant's mark.  Applicant has decided to delete all goods in Class 25.  Accordingly, please delete the present identification of goods in Class 25 in its entirety.

Class 28:  Pursuant to the Examining Attorney's request, Applicant has further specified the goods in this Class.  Accordingly, please delete the present identification of goods in Class 28 in its entirety and substitute the following:

"Board and card games; toy and novelty face masks, fantasy characters toys and action figures; dolls and doll accessories; party accessories and favors in the nature of small toys and noisemakers; bubble making wand and solution sets."

Class 42:  Pursuant to the Examining Attorney's request, Applicant has further specified the goods in this Class.  Accordingly, please delete the present identification of goods in Class 42 in its entirety and substitute the following:

"Computer services in the nature of providing a website that gives users the ability to create customized web pages featuring user-defined profiles."

RESPONSE

I.          Recitation of Services

In response to the Examining Attorney's request for a clarification of the identification of goods and services, the Applicant has amended the identification as set forth above. 

II.        Section 2(d) Refusal - Likelihood of Confusion as to Class 9 and Class 25

The Examining Attorney preliminarily concluded that there may be a likelihood of confusion (as to Class 9 only) between the Applicant's mark and a prior registration (Reg. No. 3347176).  Attorney for Applicant corresponded with the Examining Attorney in order to address this concern, and consistent with that discussion, and as set forth above, Applicant has expressly excluded "content related to religious topics" from its identification of goods in Class 9.

The Examining Attorney also preliminarily concluded that there may be a likelihood of confusion (as to Class 25 only) between the Applicant's mark and two prior registrations (Reg. Nos. 1151799 and 2343501).  Attorney for Applicant corresponded with the Examining Attorney in order to address this concern, and consistent with that discussion, and as set forth above, Applicant has deleted all goods in Class 25.   

CONCLUSION

The Applicant believes that it has satisfactorily addressed the issues raised by the Examining Attorney in Office Action No. 1.  Therefore, Applicant respectfully requests that the Examining Attorney approve Applicant's mark GREEN for publication at an early date.

The Applicant respectfully requests that the Examining Attorney telephone Gene K. Park at (202) 739-5253 if she has any further questions regarding the application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Apparel including shoes, socks, clothing for casual and athletic wear for all ages; visors and baseball caps, bandanas; baby bibs made of cloth

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Interactive video game and computer game programs; pre-recorded CDs and DVDs; backpacks and bags especially adapted for holding laptops and notebook computers
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:
Tracked Text Description: Interactive video game and computer game programs; pre-recorded CDs and DVDs; pre-recorded CDs and DVDs featuring music, spoken commentary, animation, educational content, and information in the field of general interest for children and youth, excluding content related to religious topics; backpacks and bags especially adapted for holding laptops and notebook computersClass 009 for Interactive video game and computer game programs; pre-recorded CDs and DVDs featuring music, spoken commentary, animation, educational content, and information in the field of general interest for children and youth, excluding content related to religious topics; backpacks and bags especially adapted for holding laptops and notebook computers
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Clocks, jewelry and jewelry boxes, watches and collectable coins; metal key chains
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:
Tracked Text Description: Clocks, jewelry and jewelry boxes, watches and collectable coins; metal key chainsClass 014 for Clocks, jewelry and jewelry boxes, watches and collectable coins
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Notebooks, sticker and photo albums; blank journals, writing journals; printed school supplies and school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighters, folders, notebooks, paper, writing grips, book marks, cards, and wrapping paper; children's books, comic books, posters and daily planners; toy and game packaging; posters and art prints; iron-on decals; temporary tattoos
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:
Tracked Text Description: Notebooks, sticker and photo albums; blank journals, writing journals; blank and lined writing journals, school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighting markers, folders, notebooks, paper, writing grips, book marks, greeting and correspondence cards, note cards, business and name cards, and wrapping paper; printed school supplies and school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighters, folders, notebooks, paper, writing grips, book marks, cards, and wrapping paper; children's books, comic books, posters and daily planners; toy and game cardboard and paper packaging, posters and art prints; toy and game packaging; iron-on decals; posters and art prints; temporary tattoosClass 016 for Notebooks, sticker and photo albums; blank and lined writing journals, school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighting markers, folders, notebooks, paper, writing grips, book marks, greeting and correspondence cards, note cards, business and name cards, and wrapping paper; children's books, comic books, posters and daily planners; toy and game cardboard and paper packaging, posters and art prints; iron-on decals; temporary tattoos
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Purses; all purpose, sports, beach and school bags and backpacks; articles for travel namely, luggage, carrying cases, umbrellas and knapsacks; leather or imitation leather keychains; and souvenir bags
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:
Tracked Text Description: Purses; all purpose, sports, beach and school bags and backpacks; all purpose carrying, sports, beach and school bags and backpacks; articles for travel namely, luggage, carrying cases, umbrellas and knapsacks; leather or imitation leather keychains; and souvenir bagsClass 018 for Purses; all purpose carrying, sports, beach and school bags and backpacks; articles for travel namely, luggage, carrying cases, umbrellas and knapsacks; leather or imitation leather keychains; and souvenir bags
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Board and card games; toy and novelty masks, fantasy characters and action figures; dolls and doll accessories; party accessories and favors, bubble making wand and solution sets
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:
Tracked Text Description: Board and card games; toy and novelty masks, fantasy characters and action figures; toy and novelty face masks, fantasy characters toys and action figures; dolls and doll accessories; party accessories and favors, bubble making wand and solution sets; party accessories and favors in the nature of small toys and noisemakers; bubble making wand and solution setsClass 028 for Board and card games; toy and novelty face masks, fantasy characters toys and action figures; dolls and doll accessories; party accessories and favors in the nature of small toys and noisemakers; bubble making wand and solution sets
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services in the nature of customized web pages featuring user-defined information and personal profiles
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:
Tracked Text Description: Computer services in the nature of customized web pages featuring user-defined information and personal profiles; Computer services in the nature of providing a website that gives users the ability to create customized web pages featuring user-defined profilesClass 042 for Computer services in the nature of providing a website that gives users the ability to create customized web pages featuring user-defined profiles
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: /Gene K. Park/     Date: 06/08/2009
Signatory's Name: Gene K. Park
Signatory's Position: Attorney of record, DC 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.

        
Serial Number: 77558461
Internet Transmission Date: Mon Jun 08 17:16:23 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-200906081716235389
71-77558461-4304dd9c0dfe7f06da927035f25c
a2416d-N/A-N/A-20090608154239560341