Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86865117 POWERED BY RAZER CHROMA (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86865117/large) has been amended as follows:

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

The Examining Attorney has asked that the 'and/or' language in the phrase at the end of the description of goods --'all of the aforementioned goods primarily marketed for gaming use and/or gamers' -- be modified to read only 'and', so that the phrase would read 'all of the aforementioned goods primarily marketed for gaming use and gamers'. With all due respect to the Examining Attorney, the requested change is not necessary or appropriate here. The Examining Attorney's concern that it is not 'sufficiently explicit' to include the 'and/or' because it is not clear whether applicant 'intends to use the mark on all the identified goods' is not warranted here, as the placement of the 'and/or' after the description of the specific goods with which the mark will be used, makes it clear there is no question that Applicant intends to use in connection with all of the identified goods. This is confirmed by the fact that multiple Examining Attorneys have accepted this language without objection (See, Registration Nos. 5000636 (RAZERSTORE), 4911410 (RAZER) 4943828 (RAZER), 4801783 (RAZER), and approved Applications Serial Nos. 86456271 (TEAM RAZER ESPORTS ELITE (and design)) and 79105582 (RAZER). As the goods are, in fact, identified with 'sufficiently explicit' language, the Examining Attorney need not be concerned and should withdraw the request to amend the 'and/or' formulation in the limitation at the end of the description of goods.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Light-emitting diodes (LED); LED lighting for illumination of computer hardware, computer peripherals, sound and audio apparatus and electronic devices, including mobile devices; LED lighting for indoor and outdoor lighting systems; programmable LED lighting controlled by computer software; computer software development tools; downloadable computer software for controlling LED lighting; computer software for controlling LED lighting; application software for controlling LED lighting; computer controls for lighting apparatus; all of the aforementioned goods primarily marketed for gaming use and/or gamers
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 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[ Singapore application number __________ filed 01/04/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Light-emitting diodes (LED); LED lighting for illumination of computer hardware, computer peripherals, sound and audio apparatus and electronic devices, including mobile devices; LED lighting for illumination of computer hardware, computer peripherals, sound and audio apparatus , namely, earphones, headphones, microphones, headsets, loudspeakers, sound bars and electronic devices, namely, computers, laptops, tablets, keyboards, keypads, computer mice, mouse mats, web cameras, USB hubs, USB accessories, namely, cup warmers and fans, and mobile phones; LED lighting for indoor and outdoor lighting systems; electric controllers of LED lighting for indoor and outdoor lighting systems; programmable LED lighting controlled by computer software; programmable LED lighting controls controlled by computer software; computer software development tools; downloadable computer software for controlling LED lighting; computer software for controlling LED lighting; application software for controlling LED lighting; downloadable mobile application software for controlling LED lighting; computer controls for lighting apparatus; computer application software and computer hardware for controlling lighting apparatus; all of the aforementioned goods primarily marketed for gaming use and/or gamers; all of the aforementioned goods primarily marketed for gaming use and/or gamers.Class 009 for Light-emitting diodes (LED); LED lighting for illumination of computer hardware, computer peripherals, sound and audio apparatus , namely, earphones, headphones, microphones, headsets, loudspeakers, sound bars and electronic devices, namely, computers, laptops, tablets, keyboards, keypads, computer mice, mouse mats, web cameras, USB hubs, USB accessories, namely, cup warmers and fans, and mobile phones; electric controllers of LED lighting for indoor and outdoor lighting systems; programmable LED lighting controls controlled by computer software; computer software development tools; downloadable computer software for controlling LED lighting; computer software for controlling LED lighting; downloadable mobile application software for controlling LED lighting; computer application software and computer hardware for controlling lighting apparatus; all of the aforementioned goods primarily marketed for gaming use and/or gamers.
Deleted Filing Basis: 1(b)
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 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 [ Singapore application number 40201600322S filed 01/04/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40201600322S registered 01/04/2016 with a renewal date of __________ and an expiration date of 01/04/2016 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-839136249-133720532_.__of_Registration__Powered_by_Razer_Chroma_logo_40201600322S_.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /sabel/      Date: 09/12/2016
Signatory's Name: Sally M. Abel
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 650-988-8500


Response Signature
Signature: /sabel/     Date: 09/12/2016
Signatory's Name: Sally M. Abel
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 650-988-8500

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: 86865117
Internet Transmission Date: Mon Sep 12 17:57:53 EDT 2016
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20160912175753248
142-86865117-5509d7a1fe4901e3576dcb2fef4
a86782f3289beaf925de1eb4f8d8ddd96e15fa8-
N/A-N/A-20160912133720532944