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. 86207747 RAVE(Standard Characters, see http://uspto.report/TM/86207747/mark.png) has been amended as follows:

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

                Applicant's counsel is in receipt of the Office Action dated June 10, 2014.  After careful consideration of its contents and correspondence with applicant, counsel responds as follows.

AMENDMENT

 

Please enter the following amendments.

 

International Class 11:

 

Operable lighting apparatus by radio for use in disaster prevention; lighting apparatus for use in disaster prevention; operable lighting apparatus by radio for outdoor use; lighting apparatus for outdoor use;  operable lighting apparatus by radio using chemoluminescence object; lighting apparatus using chemoluminescence object; lighting apparatus.

 

International Class 28:

 

Toys, namely, toy lights; dolls; and fishing tackle.

 

REMARKS

 

Applicant has amended its identification of goods in order to define its intended use with more specificity and to comply with U.S. Trademark Office rules and requirements.  Pursuant to the Examining Attorney's request, submitted herewith is a new application Declaration executed by applicant to support the application which was initially filed electronically and was unsigned.

The instant applicant is pending under Section 1(b) and Section 44(d) based on Japanese Application Serial No. 2013-068917 filed September 2, 2013.  The home country application has not yet matured to registration.  Applicant wishes to maintain its dual filing bases at this time.  After all informalities have been addressed, applicant respectfully requests that the U. S. application be suspended pending applicant's submission of the foreign registration.

The Examining Attorney has requested additional information regarding the nature of applicant's use of the mark.  Applicant will submit such information as soon as it becomes available.

The Examining Attorney has initially refused registration under Trademark Act Section 2(d), citing the following registrations and further indicating that applicant's proposed mark for the intended goods could be viewed as confusingly similar to the cited registrations.  However, taking into account the cited registrations co-exist on the Federal Register at this time for their respective goods, it is believed applicant's mark RAVE for its defined goods in Classes 11 and 28 can co-exist with the following registrations because it is unlikely there would be any likelihood of confusion in this particular case.

Two of the registrations noted by the Examining Attorney are owned by Revel Match LLC, namely, RAVE SPORTS (Reg. No. 3,629,832) and RAVE (Reg. No. 4,258,257).  Both marks are for goods in Class 28, none of which would overlap with applicant's Class 28, now amended to read "toys, namely, toy lights; dolls; and fishing tackle."

The Examiner has also cited the mark RAVE RAZOR (Reg. No. 2,011,071) owned by Bandai Namco Games Inc. for goods in Class 28 described as "coin-operated amusement game machines."   Once again, there is no proximity or overlap with the applicant's Class 28 goods, as amended.

With respect to the citation of RAVE & Design (Reg. No. 3,679,343) owned by CJ Youngblood Enterprises, Inc., this mark is for Class 28 goods described as "remote control toys, namely, helicopters and related parts and accessories, sold separately and as units."  There is no overlap with this registrant's goods in Class 28 and applicant's Class 28 goods, as amended.

Finally, RAVE (Reg. No. 3,202,969) owned by Heartland Tanning, Inc., is for goods in Class 11 described as "tanning lamps."  Once again, there is no overlap with this registrant's goods and applicant's goods, as amended.

While all the cited marks and applicant's mark share the term RAVE, under any analysis connected to Section 2(d) of the Trademark Act, a comparison of the marks must also be balanced with a comparison of the goods or services connected to the respective marks.  In this case, the channels of trade and end customers would not appear to overlap, and therefore a likelihood of confusion would be highly unlikely in this case.

Based on the foregoing, it is requested the Examining Attorney withdraw reference to the cited registrations.

If any further information is required, the Examining Attorney is requested to contact undersigned counsel by telephone.

EVIDENCE
Evidence in the nature of Executed copy of applicant's Response to Office Action has been attached.
Original PDF file:
evi_12411614-20141210142816256467_._S20601ResponsetoOfficeActionasfiled.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for operating lighting apparatus by radio for disaster prevention, and other lighting apparatus for disaster prevention, operating lighting apparatus by radio for outdoor and other lighting apparatus for outdoor, operating lighting apparatus using chemoluminescence object and other lighting apparatus using chemoluminescence object, other lighting apparatus
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2013-068917 filed 09/04/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: operating lighting apparatus by radio for disaster prevention, and other lighting apparatus for disaster prevention, operating lighting apparatus by radio for outdoor and other lighting apparatus for outdoor, operating lighting apparatus using chemoluminescence object and other lighting apparatus using chemoluminescence object, other lighting apparatus; Operable lighting apparatus by radio for use in disaster prevention; lighting apparatus for use in disaster prevention; operable lighting apparatus by radio for outdoor use; lighting apparatus for outdoor use; operable lighting apparatus by radio using chemoluminescence object; lighting apparatus using chemoluminescence object; lighting apparatus.Class 011 for Operable lighting apparatus by radio for use in disaster prevention; lighting apparatus for use in disaster prevention; operable lighting apparatus by radio for outdoor use; lighting apparatus for outdoor use; operable lighting apparatus by radio using chemoluminescence object; lighting apparatus using chemoluminescence object; lighting apparatus.
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2013-068917 filed 09/04/2013]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for toys, dolls, fishing tackle
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: toys, dolls, fishing tackle; Toys, namely, toy lights; dolls; and fishing tackle.Class 028 for Toys, namely, toy lights; dolls; and fishing tackle.
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

SIGNATURE(S)
Response Signature
Signature: /Jody H. Drake/     Date: 12/10/2014
Signatory's Name: Jody H. Drake
Signatory's Position: Attorney for applicant, DC bar member

Signatory's Phone Number: 202.293.7060

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: 86207747
Internet Transmission Date: Wed Dec 10 14:31:29 EST 2014
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201412101431298436
63-86207747-500a2da78d25f9f1c8da69eb3dfe
d0bd63434f7ea0ef796369b16626ac8f816aa9-N
/A-N/A-20141210142816256467