Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 77895468 has been amended as follows:

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

The examiner has cited several pending applications as a potential basis for refusal.   Applicant respectfully advises that Application Serial Nos. 77/456,085 and 77/456,155 have been abandoned and Applicant respectfully requests that the examiner withdraw these citations.  With respect to Application Serial No. 77/889,423, Applicant notes that the filing date of this intent-to-use application is December 9, 2009.  However, Applicant has a priority date of July 10, 2009 by virtue of its Austrian trademark application.  Since Applicant has priority, Applicant respectfully requests that the examiner withdraw this citation.   Finally, with respect to Application Serial No. 77/379,552, Applicant respectfully requests the examiner's reconsideration of the citation.  If the examiner will not withdraw this citation, Applicant respectfully requests that its application be suspended pending the final outcome of this application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for project management and planning of installations for lighting, air conditioning, ventilation and heating; computer programming; programming of computing routines for electronic data processing equipment

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric and electronic equipment for the operation of light emitting diodes and electroluminescent films; electronic regulating and control devices for operation of light emitting diodes; flashlights with light emitting diodes for photographical use; light emitting diodes
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Austria application number AM4171/2009 filed 07/10/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Austria registration number 253487 registered 10/14/2009 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Electric and electronic equipment for the operation of light emitting diodes and electroluminescent films; electronic regulating and control devices for operation of light emitting diodes; electronic regulating and control devices for the operation of light emitting diodes; flashlights with light emitting diodes for photographical use; light emitting diodesClass 009 for Electric and electronic equipment for the operation of light emitting diodes and electroluminescent films; electronic regulating and control devices for the operation of light emitting diodes; flashlights with light emitting diodes for photographical use; light emitting diodes
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Austria application number AM4171/2009 filed 07/10/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Austria registration number 253487 registered 10/14/2009 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for electric lamps, in particular retrofit lamps with light emitting diodes as the means of lighting; lights; light modules and lights with light emitting diodes as the means of lighting; sources of light (not included in other classes) including light emitting diodes
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Austria application number AM4171/2009 filed 07/10/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Austria registration number 253487 registered 10/14/2009 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Electric lamps, in particular retrofit lamps with light emitting diodes as the means of lighting; lights; light modules and lights with light emitting diodes as the means of lighting; namely, spotlights, downlights, ceiling recessed light modules, floodlight modules, battens, trunking light modules, floor recessed light modules, free standing light modules, surface mounted and recessed light modules, surface mounted and suspended light modules, suspended light modules, top-mounted light modules, wall mounted light modules, wall recessed light modules; sources of light (not included in other classes) including light emitting diodes; sources of light, namely, light emitting diodes lighting fixturesClass 011 for Electric lamps, in particular retrofit lamps with light emitting diodes as the means of lighting; light modules and lights with light emitting diodes as the means of lighting; namely, spotlights, downlights, ceiling recessed light modules, floodlight modules, battens, trunking light modules, floor recessed light modules, free standing light modules, surface mounted and recessed light modules, surface mounted and suspended light modules, suspended light modules, top-mounted light modules, wall mounted light modules, wall recessed light modules; sources of light, namely, light emitting diodes lighting fixtures
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Austria application number AM4171/2009 filed 07/10/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Austria registration number 253487 registered 10/14/2009 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

ADDITIONAL STATEMENTS
Claim of Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3245187.

(1) Applicant has claimed ownership of Registration No. 3,245,187 pursuant to the examiner's requirement of the same. (2) If the Austrian registration certificate submitted with the original application is acceptable, Applicant respectfully requests that the examiner delete the intent-to-use basis of the application. (3) Applicant has amended its identification of goods pursuant to the examiner's requirement of the same. Applicant respectfully points out that with few exceptions, an identification of goods and services will be considered acceptable "if it meets the standards (not necessarily the language)" set forth in the Acceptable Identification of Goods and Services Manual. TMEP Section 1402.01(a). The most important standard relevant here is that terms should be "understandable to the average person." Also deference should be given to the language and the classification set forth by the applicant in the original application. TMEP Section 1402.01(a). A term in the identification of goods should be read to have its ordinary meaning. See In re Thor Tech Inc., 85 USPQ2d 1474, 1477 (TTAB 2008) in which the TTAB reversed the examiner's refusal of the language "park trailers" because the Board found that it was recognized in the industry and was not too broad. Applicant therefore believes that its identification of goods should be accepted without further amendment.

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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 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. 2.44. 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. Section 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. Section 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: /alk/      Date: 07/30/2010
Signatory's Name: Aimee L. Kaplan
Signatory's Position: Attorney

Response Signature
Signature: /alk/     Date: 07/30/2010
Signatory's Name: Aimee L. Kaplan
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: 77895468
Internet Transmission Date: Fri Jul 30 09:28:14 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20100730092814177
720-77895468-470b1cc06cbaa1d346a5c56c7de
bbc34e-N/A-N/A-20100730091416219084