Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85413311 GRADATIM FEROCITER 20 KMLS 19 KMLS 13 KMLS 9.5 KMLS 3 KMLS (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85413311) has been amended as follows:

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

COAT OF ARMS Design

Class 42

Ser. No. 85413311

Due: June 5, 2012

This responds to the Office Action sent on December 5, 2012 ("Office Action") regarding the application by Blue Origin, LLC ("Applicant") for registration of the COAT OF ARMS Design in Class 42 ("Mark").

Drawing Description

            The Examiner Attorney has requested that the following description of the mark be used:

The mark consists of the words "GRADATIM FEROCITER" on a banner with an hourglass and wings appearing in between the two words.  Above the scroll appears a top of a globe with two ships.  Above the globe appears a shield with the wording "20 KMLS, 19 KMLS, 13 KMLS, 9.5 KMLS, 3 KMLS" stacked vertically in descending order.  Two turtles appear on each side of the shield with a stylized sun with rays appearing above the shield.  Behind this design appears a large planet with many smaller planets surrounding it.  Behind the turtle on the right side appears a rocket with clouds of smoke trailing behind it.

The following description, however, was accepted for the identical mark in Serial No. 85277469:

The mark consists of the words "GRADATIM FEROCITER" on a scroll below a map with two small ships. Above the map are two turtles with a shield between them surrounded by planets and a shooting rocket.

Given that the Trademark Office is striving for consistency in examination of applications, Applicant requests that the description of the mark used in application Serial No. 85277469 also be used for this application for the Mark.

Description of Services

            Applicant requests that the description of services be amended as follows:

Class 42: Technical and scientific consulting, research and development, engineering, design, and prototyping in the field of aerospace and aerospace-related advance technologies; computer software design and development services in the field of engineering, design, and modeling of aerospace and aerospace-related advanced technologies; scientific consulting, research and development, engineering, design and prototyping in the fields of designing, building, and operating experiments and exhibitions in space, flight simulation, and aerospace vehicles, namely, launch vehicles, spacecraft and rockets; technical consulting in the field of engineering and designing of aerospace vehicles, namely, launch vehicles, spacecraft and rockets

Class 45: Social networking services in the fields of designing, building, and operating experiments and exhibitions in space

Applicant believes the Class 45 description above should be accepted without the additional language "provided via a website" because social networking is not necessarily provided via a website.  For example, a Twitter feed does not require a website but would be considered social networking.  If the Examiner continues the request that the description of services be amended, Applicant requests that the Examining Attorney confirm that addition of language such as "on-line" or "internet based" would be an acceptable amendment.

Cited Registrations and Pending Applications

            The Examiner has cited Registrations No. 3865973 and 3890414, owned by Blue, Inc., as a bar to registration based on likelihood of confusion. Additionally, the Examiner has cited pending applications Serial Nos. 77919723, 77919720 and 77919716, owned by Blue, Inc.

            Applicant asserts that unity of control exists between the applicant and the owner of the cited registration and applications because the owner of the cited registration and applications is the sole managing member of the applicant. Because unity of control exists between the entities, no likelihood of confusion exists between the marks. TMEP 1201.07(b)(i).

Conclusion

Based upon the foregoing, Applicant respectfully requests that the Mark be as amended as detailed above and approved for publication.  If there are any remaining concerns with respect to this application, please contact the attorney of record.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Technical and scientific consulting, research and development, engineering, design, and prototyping in the field of aerospace and aerospace-related advance technologies; computer software design and development services in the field of engineering, design, and modeling of aerospace and aerospace-related advanced technologies; scientific consulting, research and development, engineering, design and prototyping in the fields of designing, building, and operating experiments and exhibitions in space, flight simulation, and aerospace vehicles, namely, launch vehicles, spacecraft and rockets; technical consulting in the field of engineering and designing of aerospace vehicles, namely, launch vehicles, spacecraft and rockets; social networking services in the fields of designing, building, and operating experiments and exhibitions in space
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Technical and scientific consulting, research and development, engineering, design, and prototyping in the field of aerospace and aerospace-related advance technologies; computer software design and development services in the field of engineering, design, and modeling of aerospace and aerospace-related advanced technologies; scientific consulting, research and development, engineering, design and prototyping in the fields of designing, building, and operating experiments and exhibitions in space, flight simulation, and aerospace vehicles, namely, launch vehicles, spacecraft and rockets; technical consulting in the field of engineering and designing of aerospace vehicles, namely, launch vehicles, spacecraft and rockets; social networking services in the fields of designing, building, and operating experiments and exhibitions in spaceClass 042 for Technical and scientific consulting, research and development, engineering, design, and prototyping in the field of aerospace and aerospace-related advance technologies; computer software design and development services in the field of engineering, design, and modeling of aerospace and aerospace-related advanced technologies; scientific consulting, research and development, engineering, design and prototyping in the fields of designing, building, and operating experiments and exhibitions in space, flight simulation, and aerospace vehicles, namely, launch vehicles, spacecraft and rockets; technical consulting in the field of engineering and designing of aerospace vehicles, namely, launch vehicles, spacecraft and rockets
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Social networking services in the fields of designing, building, and operating experiments and exhibitions in space
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the words "GRADATIM FEROCITER" on a scroll below a map with two small ships. Above the map are two turtles with a shield between them surrounded by planets and a shooting rocket.

FEE(S)
Fee(s) in the amount of $325 is being submitted.

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: /Andrea Sander/     Date: 06/05/2012
Signatory's Name: Andrea Sander
Signatory's Position: Attorney for Applicant, Member Washington State Bar

Signatory's Phone Number: N/A

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.

        
RAM Sale Number: 4858
RAM Accounting Date: 06/06/2012
        
Serial Number: 85413311
Internet Transmission Date: Tue Jun 05 17:38:41 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20120605173841878
513-85413311-490a88ed4e869c468ce889c1b7b
552def38-CC-4858-20120605164953631575