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. 78813724 has been amended as follows:
Mark
Applicant proposes to amend the mark as follows:
Original: VICTOR (Stylized and/or with Design)
The color(s) red lettering is/are claimed as a feature of the mark.
Proposed: VICTOR (Stylized and/or with Design, see mark)
The color(s) red and yellow is/are claimed as a feature of the mark.
The mark consists of the word VICTOR in red, on a yellow background of package.

Argument(s)
In response to the substantive refusal(s), please note the following:
    The Examining Attorney has found that the mark does not agree with the specimens submitted.  However, this is based on a misconception of Applicant’s mark, which the Examining Attorney describes as “the word ‘VICTOR’ in red, which is located inside a yellow rectangle”; as the Examining Attorney notes, the specimens depict the mark “as the word, VICTOR in red with an indefinite yellow background.”  The latter describes the mark for which Applicant seeks registration.

    Applicant understands that the appropriate drawing where such a claim is made, consists of a representation of the product or package, with the object (package) appearing in broken or dotted lines.  See TMEP §1202.05(d)(i).  See also 37 C.F.R. §2.52(b)(4); TMEP §807.08.  Submitted herewith is an amended drawing complying with these requirements.  The broken lines inform the viewer how the where color is used on the package, while at the same time making clear that the shape of the package is not claimed as part of the mark.  TMEP §1202.05(d)(i).

    Color may be used on multiple goods, yet registered as a single mark, through a single application.  Id. (emphasis added):


    Further, such a drawing is also appropriate where the mark includes both color and a word.  See TMEP §1202.05(d)(iii): “For example, the surface of a toaster might be green with the trademark ‘ABC’ and design displayed on the toaster.  In this situation, the applicant must decide whether to seek registration for the color green used on toasters, the letters ‘ABC’ with or without the design, the design, or some combination of those elements.”

    Accordingly, the specimens of record (by the Examining Attorney’s own description) agree with the drawing of the mark, as amended in conformance with the Trademark Rules of Practice and Trademark Manual of Examining Procedure.  Therefore, Applicant has complied with this requirement of the Examining Attorney.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for ultrasonic and electric pest repellants, namely, electric devices for attracting and killing insects and rodents; ultrasonic and electric pest repellants, namely, electric devices for attracting and killing insects and rodents, and nightlight, sold as a unit; electronic rodent trap
Original Filing Basis: 1(a).
Proposed: Class 009 for ultrasonic and electric pest repellants, namely, electric devices for attracting and killing insects and rodents; ultrasonic and electric pest repellants, namely, electric devices for attracting and killing insects and rodents, and nightlight, sold as a unit; electronic rodent trap
Filing Basis: 1(a).
Section 1(a), Use in Commerce: The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 009.
The specimen(s) submitted consists of package for the goods.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1

Additional Statements

"Applicant claims ownership of U.S. Registration Number(s) 1253638, 1987184, 2809905 and others."

The broken lines indicate where and how the mark is used on the package; the shape of the package is not claimed as part of the mark.

The color(s) red and yellow is/are claimed as a feature of the mark.

The mark consists of the word VICTOR in red, on a yellow background of package.

Declaration Signature
Original PDF file:
HS_67102512-162736371_._T35430US0_dec_ex.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Andrew B. Woolworth
Signatory's Position: Executive Vice President

Response Signature
Signature: /Marsha G. Gentner/     Date: 02/07/2007
Signatory's Name: Marsha G. Gentner
Signatory's Position: Attorney of Record
        
Serial Number: 78813724
Internet Transmission Date: Wed Feb 07 16:59:07 EST 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-200702071659079852
15-78813724-3602e8ff3134966a0125c7ad8a6c
9b8fc2c-N/A-N/A-20070207162736371398