TEAS Response to Suspension Inquiry

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 86425996 AMAZON (Stylized and/or with Design, see http://uspto.report/TM/86425996/mark.png) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 86419254 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)

Prosecution has been suspended in light of USTM SN 86419254 for AMAZON REGISTRY SERVICES (the “Cited Application”) owned by Amazon Registry Services, Inc. (“ARS”).  However ARS is an affiliate of Applicant Amazon Technologies, Inc. (“ATI”).  A close relationship between associated companies will obviate any likelihood of consumer confusion between the companies’ trademarks, as the public will perceive the parties’ corresponding goods and services as emanating from a single source.  See In re Wella A.G., 787 F.2d 1549, 1552, 229 U.S.P.Q. 274, 276 (Fed. Cir. 1986); In re Wella A.G., 5 U.S.P.Q.2d 1359, 1361 (T.T.A.B. 1987); Trademark Manual of Examining Procedure (“T.M.E.P.”) §1201.07.  Indeed, in prosecuting the Cited Application, ARS pointed to its close relationship with ATI to overcome citation of four ATI registrations.  See Exhibit A, Office Action Response dated August 3, 2015.  ARS indicated that:

Applicant and Amazon Technologies, Inc. are closely-related sister companies.  Both Applicant and Amazon Technologies, Inc. are owned by the same parent, Amazon.com, Inc. and all three companies offer goods or services under the shared AMAZON-formative family of trademarks.  When encountering Applicant’s Mark and the Cited Marks, consumers will understand that the services offered by both Applicant and by Amazon Technologies, Inc. under their respective AMAZON-formative trademarks emanate from the same source, namely “Amazon”, which obviates any likelihood of consumer confusion between Applicant’s use of Applicant’s Mark and Amazon Technologies, Inc.’s use of the Cited Marks. 

In light of the close relationship between ARS and ATI, which has already been recognized in the Cited Application, ATI respectfully requests that suspension based on the Cited Application be lifted.

The Examiner has also maintained a refusal based on US Registration No. 2264038, indicating that the refusal “refers only to applicant's advertising, marketing, and promotion services and does not bar registration for any other services listed in the application.”  In light of the amendments submitted herewith Applicant respectfully requests withdrawal of this refusal.

Original PDF file:
PE_6915198238-130257466_._Exhibit_A.pdf
Converted PDF file(s) (12 pages)
Pending File1
Pending File2
Pending File3
Pending File4
Pending File5
Pending File6
Pending File7
Pending File8
Pending File9
Pending File10
Pending File11
Pending File12
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; online retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; providing consumer product information via the Internet or other communications networks; computerized electronic processing of on-line purchase orders; compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; administration of customer loyalty program services which enable participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; customer loyalty program services featuring rewards in the form of discounted shipping services; administration of a discount program enabling participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Business management; Business administration; Providing office functions; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Sales promotion for others; Business information services; Retail department stores; Retail on-line department stores; Retail convenience stores; Retail on-line convenience stores; Computerized on-line ordering featuring general consumer merchandise, consumables and household goods, and general consumer goods; Providing a searchable database in the field of business information available via a global computer network. Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; On-line retail and wholesale distributorship services featuring general consumer merchandise, consumables and household goods, and general consumer goods; On-line trading services, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; Automated and computerized trading of goods and services for others provided over a global communication information network, namely operating on-line marketplaces for sellers and buyers of goods and/or services; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes; sales promotion and auction services relating to a wide range of consumer goods; Product maintenance, namely, arranging for others the replacement of consumer goods; Subscriptions to books, reviews, or comic books; market research and market research information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating sharing of relevant information about entertainment and the entertainment industry; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; Online retail store services featuring streamed and downloadable pre-recorded electronic games; providing a web-based system and online portals in the field of consumer-to-business commerce for consumers to enter, manage and modify a payment and delivery profile and for sellers to enter, manage and modify their product listings; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/25/2000 and first used in commerce at least as early as 01/25/2000, and is now in use in such commerce.

Proposed:
Tracked Text Description: Retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; online retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; providing consumer product information via the Internet or other communications networks; computerized electronic processing of on-line purchase orders; compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; administration of customer loyalty program services which enable participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; customer loyalty program services featuring rewards in the form of discounted shipping services; administration of a discount program enabling participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Business management; Business administration; Providing office functions; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Sales promotion for others; Business information services; Retail department stores; Retail on-line department stores; Retail convenience stores; Retail on-line convenience stores; Computerized on-line ordering featuring general consumer merchandise, consumables and household goods, and general consumer goods; Providing a searchable database in the field of business information available via a global computer network. Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; On-line retail and wholesale distributorship services featuring general consumer merchandise, consumables and household goods, and general consumer goods; On-line trading services, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; Automated and computerized trading of goods and services for others provided over a global communication information network, namely operating on-line marketplaces for sellers and buyers of goods and/or services; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes; Product maintenance, namely, arranging for others the replacement of consumer goods; sales promotion and auction services relating to a wide range of consumer goods; Subscriptions to books, reviews, or comic books; compiling of information into computer databases; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; market research and market research information services; Online retail store services featuring streamed and downloadable pre-recorded electronic games; providing a web-based system and online portals in the field of consumer-to-business commerce for consumers to enter, manage and modify a payment and delivery profile and for sellers to enter, manage and modify their product listings; market research and business marketing information services, namely, facilitating sharing of relevant information about entertainment and the entertainment industry; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for othersClass 035 for Retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; online retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; providing consumer product information via the Internet or other communications networks; computerized electronic processing of on-line purchase orders; compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; administration of customer loyalty program services which enable participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; customer loyalty program services featuring rewards in the form of discounted shipping services; administration of a discount program enabling participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Business management; Business administration; Providing office functions; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Business information services; Retail department stores; Retail on-line department stores; Retail convenience stores; Retail on-line convenience stores; Computerized on-line ordering featuring general consumer merchandise, consumables and household goods, and general consumer goods; Providing a searchable database in the field of business information available via a global computer network. Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; On-line retail and wholesale distributorship services featuring general consumer merchandise, consumables and household goods, and general consumer goods; On-line trading services, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; Automated and computerized trading of goods and services for others provided over a global communication information network, namely operating on-line marketplaces for sellers and buyers of goods and/or services; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes; Product maintenance, namely, arranging for others the replacement of consumer goods; Subscriptions to books, reviews, or comic books; compiling of information into computer databases; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; Online retail store services featuring streamed and downloadable pre-recorded electronic games; providing a web-based system and online portals in the field of consumer-to-business commerce for consumers to enter, manage and modify a payment and delivery profile and for sellers to enter, manage and modify their product listings; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/25/2000 and first used in commerce at least as early as 01/25/2000, and is now in use in such commerce.

Response Suspension Inquiry Signature
Signature: /James F. Struthers/     Date: 04/09/2017
Signatory's Name: James F. Struthers
Signatory's Position: Attorney of Record, TX Bar Member
Signatory's Phone Number: 214 206-4300

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: 86425996
Internet Transmission Date: Sun Apr 09 13:08:25 EDT 2017
TEAS Stamp: USPTO/RSI-XX.XX.XXX.XXX-2017040913082503
1487-86425996-580410531c7172b09fabffa1c0
f3d186d559b185ec34c8789c79d594999683385e
-N/A-N/A-20170409130257466056