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. 85565790 WINDOWS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85565790) has been amended as follows:

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

Applicant hereby responds to the April 9, 2012 Office Action as follows:

 

Section 2(d) Refusal

Cited Registration No. 1742196 for the mark WINDOWPHONE has been assigned to Applicant and the assignment recorded with the USPTO at reel/frame 4862/0022.  As such, Applicant understands this refusal with be withdrawn.

 

Request for Information

The April 9, 2012 Office Action requests information concerning Applicant’s computer software claimed in the present application to determine whether “Windows” is merely descriptive of such software.  Applicant understands from a telephone conference with the Examining Attorney that this information is no longer needed, based on the Examining Attorney’s review of corresponding information provided in Applicant’s co-pending application Serial No. 85435856 for WINDOWS PHONE and the Examining Attorney’s conclusion that “Windows” is not merely descriptive for Applicant’s mobile phone software.

 

In particular, the software claimed in the present application is use in connection with mobile phones and mobile phone software. Information about Applicant’s WINDOWS phone software is available on Applicant’s website at: http://www.microsoft.com/windowsphone/en-us/default.aspx. (See copy filed herewith as Exhibit 1) Applicant also files herewith as Exhibit 2 a third-party review of its WINDOWS phone that includes photos showing various displays on the phone. As can be seen in the various photos in Exhibit 2, the graphical user interface of Applicant’s WINDOWS phone software is essentially a single-display interface where an application such as email or contacts take up the entire display. For example, the photo on page 6 shows the email application occupying the entire display, the photo on the top of page 7 shows the texting application occupying the entire display, and the photo on page 8 shows the Marketplace application occupying the entire display. The graphical user interface for the WINDOWS phone goods is unlike a graphical user interface for PCs where multiple active applications are displayed in different windows on the screen. Thus, even if “WINDOWS” is considered to merely describe PC software that includes a graphical user interface with overlapping display windows (a proposition that Applicant contests as indicated in its appeal pending in Application Serial No. 78/863190 for WINDOWS RALLY), the single-display GUI on the WINDOWS smart phone leaves no doubt that “WINDOWS” does not merely describe the goods at issue in this application.

 

Applicant notes that “WINDOWS” was not considered merely descriptive of its mobile phone software in its filings for WINDOWS MOBILE, its prior mark used for these goods. See US Registration No. 2988040 for WINDOWS MOBILE in Class 9 and March 13, 2006 Office Action response in application Serial No. 78441047 for WINDOWS MOBILE in Class 38, filed herewith as Exhibit 3, which was allowed without a disclaimer of WINDOWS.

 

Applicant believes the requirement to provide additional information, to the extent it remains in place, has been met. 

 

In view of the above, Applicant believes this application is in condition for allowance.  If questions remain, the Examining Attorney is invited to contact Applicant's counsel, William O. Ferron, Jr. by email at BillF.Docketing@SeedIP.com or by telephone at (206) 622-4900.

EVIDENCE
Evidence in the nature of Exhibits 1, 2 and 3 has been attached.
Original PDF file:
evi_38100227210-175229529_._Exhibit_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_38100227210-175229529_._Exhibit_2.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Original PDF file:
evi_38100227210-175229529_._Exhibit_3.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

SIGNATURE(S)
Response Signature
Signature: /William O. Ferron, Jr./     Date: 10/05/2012
Signatory's Name: William O. Ferron, Jr.
Signatory's Position: Attorney for Applicant, Washington State Bar Member

Signatory's Phone Number: 206-622-4900

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: 85565790
Internet Transmission Date: Fri Oct 05 20:12:00 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201210052012006
79269-85565790-4907b949b608dfb34a3fcbaf8
28c090ed32-N/A-N/A-20121005175229529604