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. 85853994 ALERT(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85853994) has been amended as follows:

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

Sec. 2(d) refusal to register - Likelihood of confusion with RN 3678012:

Applicant advises that it is in the process of bringing a Cancellation Action against RN 3678012, ALERT SIGNAL, the 2009 registration cited by the Examining Attorney as grounds for a likelihood of confusion refusal to register.

Applicant's date of first use in interstate commerce of ALERT for "sirens for vehicles" is November 8, 2006.  Registrant Alert Signal's date of first use of ALERT SIGNAL is December 2007, nearly a year and two months later than Applicant's date of first use.  In addition, on information and belief, Registrant Alert Signal is not using its mark on "sirens for vehicles" or, for that matter, on most of the goods recited in its registration.  The use specimen submitted with Alert Signal's June 2008 application was labeled packaging for an LED lighthead only.  The only products displayed on offer at Registrant Alert Signal's website are "dash/deck lights, light heads and flush-mount flashers."No sirens of any sort, nor most of the other products in the goods description for RN 2678012.  Registrant has abandoned its claim of rights, junior as it is, to most of the goods in its registration including the one item that collides with Applicant’s goods.

Applicant, by virtue of its first use in commerce, has a senior right both to use and register ALERT for "sirens for vehicles."  Applicant requests the Examining Attorney to suspend prosecution of SN 85853994 until the cancellation action against RN 3678012 comes to a conclusion.

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Nancy Dwyer Chapman/      Date: 11/13/2013
Signatory's Name: Nancy Dwyer Chapman
Signatory's Position: Attorney for Applicant, New York State Bar member
Signatory's Phone Number: 914-723-4300 x160


Response Signature
Signature: /Nancy Dwyer Chapman/     Date: 11/13/2013
Signatory's Name: Nancy Dwyer Chapman
Signatory's Position: Attorney for Applicant, New York State Bar member

Signatory's Phone Number: 914-723-4300 x160

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: 85853994
Internet Transmission Date: Wed Nov 13 16:38:49 EST 2013
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2013111316384964
9804-85853994-500a616ebb392e861564ebfcbe
3c0b8ecc191355735903a5ae98b6c477772c87b9
9-N/A-N/A-20131113162916041115