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. 86524610 FENIX(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86524610/large) has been amended as follows:

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

Goods and services in all but class 41 are being deleted from this application.  No further filing fees are submitted. Applicant is amending the identification of class 41 services substantially as suggested by the Examining Attorney.

Applicant notes the cited registrations.  The fact that 4 cited registrations all in class 41 can coexist for a similar sounding mark suggests that the word FENIX and its phoenetic equivalents have limited scope.  As a result when the mark BETH PHOENIX is compared to FENIX, the marks are not similar.  The registered mark BETH PHOENIX begins with the word BETH.  BETH then is the dominant aspect of that mark.  Marks must be considered as a whole.  Especially when taken as a whole, the marks are not confusingly simliar. 

FENIX does not have any particular significance in the relevant industry or as applied to the goods and services described in the application, nor is it a "term of art."

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Pre-recorded DVDs featuring sports entertainment; video game software; computer game software; mobile app computer game software; online computer game software; mass multi-player computer game software; audio books in the nature of novels; downloadable video, audio and audiovisual content featuring sports entertainment; downloadable ring tones, graphics and music via a global computer network and wireless devices; video and computer game tapes, video and computer game discs, video and computer game cassettes, video and computer game cartridges, video and computer game CD-ROMs; video and computer game software; cinematographic and television films, namely, motion picture films; pre-recorded compact discs, pre-recorded DVDs and pre-recorded audio cassettes all featuring sports entertainment; interactive video game programs and computer game cartridges; coin-fed amusement gaming machines; mouse pads; sunglasses; sunglass cases; pre-recorded digital video discs featuring sports entertainment; pre-recorded electronic media devices featuring sports entertainment; recording discs; compact discs, DVDs and other digital recording media

Applicant hereby deletes the following class of goods/services from the application.
Class 016 for Series of fiction works, namely, books and magazines featuring scenes and characters based on a television series; stickers; framed pictures; pens; pencils; posters; trading cards; calendars; photographs; postcards; greeting cards; pictures; decals; souvenir programs; books featuring pictorial biographies; comic books; graphic novels; memo pads; date books; address books; bumper stickers; window decals; Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery

Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Clothing, namely, shirts, t-shirts, tank tops, pants, skirts, shorts, tops, bottoms, swimsuits, sleepwear, robes, hats, caps, gloves, scarves, neckties, belts, coats, jackets, sweaters, rainwear, sweat suits, sweat shirts, sweat pants, socks, footwear, gloves, bandanas, wrist bands, underwear, lingerie, beach cover-ups, swimwear and beachwear; belts; ponchos; rainwear; exercise clothing, clothing, headgear, Halloween and masquerade costumes and masks sold in connection therewith; clothing, namely, tops, shirts, jackets, bottoms, pants, shorts, underwear, pajamas; robes, lingerie, exercise clothing, namely, tops and bottoms, loungewear, bras, yoga clothing, namely, tops and bottoms, leggings, clothing ties; gloves; Halloween and masquerade costumes; footwear, namely, shoes, sneakers, slippers; headwear, namely, hats; wrist bands; bandanas; clothing, footwear, headgea

Applicant hereby deletes the following class of goods/services from the application.
Class 028 for Toys, games, playthings and sporting goods, namely, toy figures and action figures and accessories sold in connection therewith; toy vehicles, card games, face masks, board games based on an on-going television series; card games, playing cards, trading card games, puzzles, party games, action skill games, stuffed toys; stand-alone video output game machines; electronic and electro-mechanical casino gaming tables with video output; arcade games; pinball games; hand-held units for playing electronic game; tabletop action skill games; jigsaw puzzles; bobble-head dolls; puppets; Christmas tree decorations; costume masks; skateboards, snowboards, snow globes, action skill games; casino gaming machines; computerized video table games for casinos; games and playthings; gymnastic and sporting articles not included in other classes

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; live events featuring wrestling contests and exhibitions; performances by a professional wrestler and entertainer; providing wrestling news, information and video via a global computer network; amusement and theme park services; casinos; conducting and providing facilities for casino gaming contests and tournaments; casinos; entertainment services, namely, casino gaming; entertainment; sporting and cultural activities
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: Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; live events featuring wrestling contests and exhibitions; entertainment services, namely, live events featuring wrestling contests and exhibitions; performances by a professional wrestler and entertainer; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and video via a global computer network; providing wrestling news, information and non-downloadable video via a global computer network; amusement and theme park services; casinos; conducting and providing facilities for casino gaming contests and tournaments; casinos; entertainment services, namely, casino gaming; entertainment, namely, an ongoing series for television and online featuring adventure and drama; entertainment; sporting and cultural activitiesClass 041 for Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network; amusement and theme park services; casinos; conducting and providing facilities for casino gaming contests and tournaments; entertainment services, namely, casino gaming; entertainment, namely, an ongoing series for television and online featuring adventure and drama
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
Significance of wording, letter(s), or numeral(s)
FENIX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /paul d. supnik/     Date: 10/26/2015
Signatory's Name: Paul D. Supnik
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 310-859-0100

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86524610
Internet Transmission Date: Mon Oct 26 15:39:22 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20151026153922
119282-86524610-540a4ab3861b61199e669480
ca208a1a14f53ba10d04f92bf7c587152d75364c
-N/A-N/A-20151026151339185106