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. 86385730 HIMAX (Stylized and/or with Design, see http://uspto.report/TM/86385730/mark.png) has been amended as follows:

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

            In response to the Trademark Attorney's Priority Office Action dated December 18, 2014, the following amendments and remarks are respectfully submitted in connection with the above-identified application.

In the Application

Please amend the identification of goods and recitation of services as follows:

Electronic controls for motors; stylus pen, namely, the stylus pen used for computers, mobile devices, and tablets; touchscreen controllers; optical lenses; projectors and their parts; Photoelectric sensors; cameras; power management integrated circuits; LED driver integrated circuits; LED lighting equipment, namely, LED light controls, LED circuit boards and LED light control chips, in International Class 9;

 

Design of and computer programming and computer system analysis for motor controllers, touch pens, touch controllers, optical lenses, micro-electro-mechanical systems, photoelectric sensors, cameras, power management integrated circuits, LED driver integrated circuits, and LED lighting equipment, in International Class 42.--

Please insert the following statements:

 

Regarding ownership of prior registrations:

 

--Applicant is the owner of U.S. Registration Nos. 3092425, 3092423, 3585546, and others.-- 

Regarding color claim

--The colors light blue, dark blue and white are claimed as a feature of the mark.--

Regarding  description of the mark:

--The mark consists of a stylized pyramid design with light blue and white stripes on the left side of the pyramid and dark blue and white stripes on the right side of the pyramid.  This design appears to the left of the stylized wording “HIMAX” in dark blue stylized font.--

Remarks

            Applicant thanks the Trademark Attorney for the very thorough consideration given the present application. 

IDENTIFICATION OF GOODS AND Recitation of Services

            The Trademark Attorney objected the identification of goods and recitation of services as being too broad needing clarification.  As set forth hereinabove, the identification of goods and recitation of services have been amended according to the requirements of the Trademark Attorney.  Applicant did not want to add any new classes to the application.  Entry of the amended identification of goods and recitation of services into the official record is respectfully requested.

OWNERSHIP STATEMENT

            In addition, a statement regarding ownership of the prior registrations has been inserted into the present application to satisfy the Trademark Attorney’s requirements.  Entry of this statement into the official record is respectfully requested. 

COLOR CLAIM

            Applicant has entered a color claim statement as required by the Trademark Attorney.  Entry of this statement into the official record is respectfully requested. 

DESCRIPTION OF THE MARK

            Applicant has also entered a statement regarding the description of the mark as requested by the Trademark Attorney.  Entry of this statement into the official record is respectfully requested. 

CONCLUSION

            Since the official records have failed to uncover any similar registered or pending mark that would bar registration under Trademark Act § 2(d), and since all the requirements of the Trademark Attorney have been complied with, it is believed that the present application should be in condition for publication. Therefore, an early Notice of Publication is respectfully requested.

            Please charge any fees or credit any overpayment pursuant to 37 C.F.R. § 2.6 to Deposit Account No. 02-2448.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for motor controller; touch pen; touch controller; optical lens; micro-electro-mechanical system; photoelectric sensor; camera; Power management integrated circuit; LED driver integrated circuit; LED lighting equipment
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: motor controller; Electronic controls for motors; touch pen; stylus pen, namely, the stylus pen used for computers, mobile devices, and tablets; touch controller; touchscreen controllers; optical lens; optical lenses; micro-electro-mechanical system; projectors and their parts; photoelectric sensor; Photoelectric sensors; camera; cameras; Power management integrated circuit; power management integrated circuits; LED driver integrated circuit; LED driver integrated circuits; LED lighting equipment; LED lighting equipment, namely, LED light controls, LED circuit boards and LED light control chipsClass 009 for Electronic controls for motors; stylus pen, namely, the stylus pen used for computers, mobile devices, and tablets; touchscreen controllers; optical lenses; projectors and their parts; Photoelectric sensors; cameras; power management integrated circuits; LED driver integrated circuits; LED lighting equipment, namely, LED light controls, LED circuit boards and LED light control chips
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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, program and analysis for motor controller, touch pen, touch controller, optical lens, micro-electro-mechanical system, photoelectric sensor, camera, power management integrated circuit, LED driver integrated circuit, LED lighting equipment
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: Design, program and analysis for motor controller, touch pen, touch controller, optical lens, micro-electro-mechanical system, photoelectric sensor, camera, power management integrated circuit, LED driver integrated circuit, LED lighting equipment; Design of and computer programming and computer system analysis for motor controllers, touch pens, touch controllers, optical lenses, micro-electro-mechanical systems, photoelectric sensors, cameras, power management integrated circuits, LED driver integrated circuits, and LED lighting equipment,Class 042 for Design of and computer programming and computer system analysis for motor controllers, touch pens, touch controllers, optical lenses, micro-electro-mechanical systems, photoelectric sensors, cameras, power management integrated circuits, LED driver integrated circuits, and LED lighting equipment,
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
Color Claim
The color(s) light blue, dark blue and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of a stylized pyramid design with light blue and white stripes on the left side of the pyramid and dark blue and white stripes on the right side of the pyramid. This design appears to the left of the stylized wording "HIMAX" in dark blue stylized font.

Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3092425, 3092423, 3585546, and others.


SIGNATURE(S)
Response Signature
Signature: /James M. Slattery/     Date: 06/18/2015
Signatory's Name: James M. Slattery
Signatory's Position: Attorney of Record, VA Bar

Signatory's Phone Number: 7032058000

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: 86385730
Internet Transmission Date: Thu Jun 18 11:21:06 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201506181121067
60636-86385730-530e17918ec41321f2c4c5159
25641321941be2e8e4311e92027abb84d332f67e
-N/A-N/A-20150618110322688180