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. 85077483 has been amended as follows:

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

In the office action, the Examining Attorney requested amendment of the identification of goods on the ground that the identification is unacceptable as indefinite, and also requested an indication of geographic origin.

 

Applicant has amended the identification, which includes the following additional goods:

 

“battery packs, cable connectors, converters, conductors and connection fittings therefor, lens cages, lens covers and lenses”

 

These goods are from Applicant’s companion application in Class 11 for the same mark filed on the same date as Applicant’s present application, namely, Serial No. 85/077,489.  Applicant respectfully requests re-classification and amendment pursuant to Section 1402.08 of the Trademark Manual of Examining Procedure.  To the extent that the amended goods should remain in Applicant’s application, Serial No. 85/077,489, Applicant defers to the Examining Attorney and requests coordination between Applicant’s two applications to ensure that the amended goods are located in at least one of the applications. 

 

Applicant has attached a representative example of Applicant’s lens covers and lenses from Applicant’s website to provide further information for the Examining Attorney’s review, for further guidance on whether the goods belong in Class 9 or Class 11.

 

Finally, Applicant has entered the indication of geographic origin as requested by the Examining Attorney.

EVIDENCE
Evidence in the nature of Internet printout has been attached.
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Accessories and replacement parts for electric lighting fixtures, namely, cables, cable electric cords, electric couplings, electric sensors, electric wires, electrical connector housings, electrical controllers, electrical terminal blocks, poles with electrical sources in protective covers, power distribution boxes, replacement bulbs, rechargeable electric batteries, risers, sheathes for electric cables, solar batteries, sockets for electric lights, solar panels, timers, transformers, and voltage regulators for electric power; electric outlets; electric outlet boxes; and electric outlet box covers
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/20/1965 and first used in commerce at least as early as 10/20/1965, and is now in use in such commerce.

Proposed:
Tracked Text Description: Accessories and replacement parts for electric lighting fixtures, namely, cables, cable electric cords, electric couplings, electric sensors, electric wires, electrical connector housings, electrical controllers, electrical terminal blocks, poles with electrical sources in protective covers, power distribution boxes, replacement bulbs, rechargeable electric batteries, risers, sheathes for electric cables, solar batteries, sockets for electric lights, solar panels, timers, transformers, and voltage regulators for electric power; Accessories and replacement parts for electric lighting fixtures, namely, electric cables, cable electric cords, electric couplings, electric sensors, electric wires, electrical connector housings, electrical controllers, electrical terminal blocks, plastic poles with electrical sources in protective covers, electrical power distribution boxes, replacement light bulbs, rechargeable electric batteries, plastic risers, sheathes for electric cables, solar batteries, solar panels for production of electricity, timers, transformers, voltage regulators for electrical power, battery packs, cable connectors, converters, conductors and connection fittings therefor, lens cages, lens covers and lenses; electric outlets; electric outlet boxes; and electric outlet box coversClass 009 for Accessories and replacement parts for electric lighting fixtures, namely, electric cables, cable electric cords, electric couplings, electric sensors, electric wires, electrical connector housings, electrical controllers, electrical terminal blocks, plastic poles with electrical sources in protective covers, electrical power distribution boxes, replacement light bulbs, rechargeable electric batteries, plastic risers, sheathes for electric cables, solar batteries, solar panels for production of electricity, timers, transformers, voltage regulators for electrical power, battery packs, cable connectors, converters, conductors and connection fittings therefor, lens cages, lens covers and lenses; electric outlets; electric outlet boxes; and electric outlet box covers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/20/1965 and first used in commerce at least as early as 10/20/1965, and is now in use in such commerce.
ADDITIONAL STATEMENTS
The goods do not originate from the geographic location named in the mark.

SIGNATURE(S)
Response Signature
Signature: /Susan Hwang/     Date: 04/15/2011
Signatory's Name: Susan Hwang
Signatory's Position: Attorney of record, CA 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: 85077483
Internet Transmission Date: Fri Apr 15 19:11:19 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201104151911190
54575-85077483-48050cd972d7d27bf98f5e44e
dc7f6cded7-N/A-N/A-20110415190702269831