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. 85749644 GENETIC(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85749644) has been amended as follows:

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

This correspondence is in response to the Office Action mailed on February 6, 2013. In that Action, the Examining Attorney refused registration of the instant mark based on a prior registration in the name of Collective Licensing International, LLC, and advised that a prior pending application in the name of Collective Licensing International, LLC might bar registration of the instant mark. In an effort to avoid consumer confusion, the Parties have entered into a Consent Agreement covering use of Applicant's instant mark and the cited Applicant's mark. A copy of the Consent Agreement is attached to this correspondence. Applicant requests that suspension be withdrawn because the Consent Agreement attached hereto is evidence that the parties involved have deemed the coexistence of registration of the cited application and the instant application to be acceptable, given the terms of the Agreement. As indicated in the Consent Agreement, the cited Applicant and the instant Applicant have agreed to work together to avoid any public confusion by taking reasonable actions to prevent or correct confusion. Accordingly, pursuant to TMEP Section 1201.07(d)(viii), the judgment of the instant parties should outweigh any concerns on the part of the Examiner, especially because there are no other factors that weigh in favor of refusal. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank 842 F.2d 1270, 6 USPQ 2d 1305 (Fed. Cir. 1988). Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the suspension and approve the application. The Examining Attorney's courteous suggestions and recommendations are gratefully acknowledged.

EVIDENCE
Evidence in the nature of an executed consent agreement as referenced in the arguments has been attached.
Original PDF file:
evi_7113015215-201713911_._GENETIC_Collective_Consent_March_14.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

SIGNATURE(S)
Response Signature
Signature: /jkr/     Date: 03/14/2013
Signatory's Name: Jessie K. Reider, CA Bar No. 237,113
Signatory's Position: Attorney for Applicant

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: 85749644
Internet Transmission Date: Thu Mar 14 20:20:50 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2013031420205006
2160-85749644-5005e391a77b9383a2e746ba6a
ec513377642dbf877f421b9e1e302b82c595180-
N/A-N/A-20130314201713911800