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. 87114506 ULYSSES(Standard Characters, see http://uspto.report/TM/87114506/mark.png) has been amended as follows:

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

Registration of the subject application has been refused under Section 2(d), based on an alleged likelihood of confusion with U.S. Reg. No. 4389189 for the mark "ULYSSES". This refusal relates only to the following goods listed in the subject application: "accessories for cameras and digital cameras; accessories for mobile phones and smart phones; accessories for tablet computers". Notably, the Examining Attorney indicated these goods conflict with the Registrant's "batteries". By this response, the Identification of Goods and Services in the subject application is amended to specify that the recited accessories do not include batteries. As such, the goods and services of the subject application and those listed in the cited registration are considered to sufficiently differ to avoid a likelihood of confusion between the subject application and the cited registration. Thus, withdrawal of this ground for refusal is requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Cases for cameras and digital cameras; straps for cameras and digital cameras; bags for cameras and digital cameras; pouches for cameras and digital cameras; grips for cameras and digital cameras; accessories for cameras and digital cameras; cases for camera lenses; cases for spectacle lenses; pouches for camera lenses; pouches for spectacle lenses; wiping cloths for camera lenses; wiping cloths for spectacle lenses; tripods; monopods; cameras and digital cameras, and their parts and fittings; cases for mobile phones and smartphones; straps for mobile phones and smartphones; pouches for mobile phones and smartphones; holders for mobile phones and smartphones; screen cleaners for mobile phones and smartphones; accessories for mobile phones and smartphones; mobile phones and smartphones, and their parts and fittings; cases for tablet computers; straps for tablet computers; bags for tablet computers; screen cleaners for tablet computers; accessories for tablet computers; tablet computers and their parts and fittings; cases for electronic computer terminals; bags for electronic computer terminals; screen cleaners for electronic computer terminals; electronic computer terminals and their parts and fittings
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 06/06/2009 and first used in commerce at least as early as 12/08/2011 , and is now in use in such commerce.

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[ Japan application number 2016-7980 filed 01/26/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cases for cameras and digital cameras; Cases, bags, pouches, grips, and straps specially adapted for cameras and digital cameras; straps for cameras and digital cameras; accessories for cameras and digital cameras, other than batteries, namely, hot shoe covers, flashlamps, shutter releases, lens hoods, lens filters, mounting devices, lens caps, liquid screen protectors, mount adapters, teleconverters, and lenses; bags for cameras and digital cameras; cases and pouches specially adapted for camera lenses and spectacle lenses; pouches for cameras and digital cameras; tripods for cameras and digital cameras; grips for cameras and digital cameras; monopods for cameras and digital cameras; accessories for cameras and digital cameras; cameras and digital cameras; cases for camera lenses; cases, straps, pouches, and holders specially adapted for mobile phones and smartphones; cases for spectacle lenses; mobile phones and smartphones; pouches for camera lenses; cases, straps, and bags specially adapted for tablet computers; pouches for spectacle lenses; tablet computers; wiping cloths for camera lenses; cases and bags specially adapted for electronic computer terminals; wiping cloths for spectacle lenses; electronic computer terminals; tripods; monopods; cameras and digital cameras, and their parts and fittings; cases for mobile phones and smartphones; straps for mobile phones and smartphones; pouches for mobile phones and smartphones; holders for mobile phones and smartphones; screen cleaners for mobile phones and smartphones; accessories for mobile phones and smartphones; mobile phones and smartphones, and their parts and fittings; cases for tablet computers; straps for tablet computers; bags for tablet computers; screen cleaners for tablet computers; accessories for tablet computers; tablet computers and their parts and fittings; cases for electronic computer terminals; bags for electronic computer terminals; screen cleaners for electronic computer terminals; electronic computer terminals and their parts and fittingsClass 009 for Cases, bags, pouches, grips, and straps specially adapted for cameras and digital cameras; accessories for cameras and digital cameras, other than batteries, namely, hot shoe covers, flashlamps, shutter releases, lens hoods, lens filters, mounting devices, lens caps, liquid screen protectors, mount adapters, teleconverters, and lenses; cases and pouches specially adapted for camera lenses and spectacle lenses; tripods for cameras and digital cameras; monopods for cameras and digital cameras; cameras and digital cameras; cases, straps, pouches, and holders specially adapted for mobile phones and smartphones; mobile phones and smartphones; cases, straps, and bags specially adapted for tablet computers; tablet computers; cases and bags specially adapted for electronic computer terminals; electronic computer terminals
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 06/06/2009 and first used in commerce at least as early as 12/08/2011 , and is now in use in such commerce.
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 [ Japan application number 2016-7980 filed 01/26/2016]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Folding briefcases; shoulder bags; Gladstone bags; wicker trunks (kori); briefcases; suitcases; carry-on bags; trunks; handbags; Boston bags; schoolchildren's backpacks; rucksacks; tote bags; other bags and the like; charm bags (Omamori-ire); card cases, namely, notecases; shopping bags, including wheeled shopping bags; purses; key cases; money pouches; wallets; commutation-ticket holders; business card cases; other pouches and the like
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[ Japan application number 2016-7980 filed 01/26/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Folding briefcases; shoulder bags; Gladstone bags; wicker trunks (kori); briefcases; suitcases; carry-on bags; trunks; handbags; Boston bags; schoolchildren's backpacks; rucksacks; tote bags; other bags and the like; charm bags (Omamori-ire); credit card cases; card cases, namely, notecases; shopping bags, namely, wheeled shopping bags; shopping bags, including wheeled shopping bags; purses; key cases; leather money pouches; money pouches; wallets; business card cases; commutation-ticket holders; other pouches and the likeClass 018 for Folding briefcases; shoulder bags; Gladstone bags; wicker trunks (kori); briefcases; suitcases; carry-on bags; trunks; handbags; Boston bags; schoolchildren's backpacks; rucksacks; tote bags; charm bags (Omamori-ire); credit card cases; shopping bags, namely, wheeled shopping bags; purses; key cases; leather money pouches; wallets; business card cases
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 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 2016-7980 filed 01/26/2016]. 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.

SIGNATURE(S)
Response Signature
Signature: /Samir S. Khoury/     Date: 05/09/2017
Signatory's Name: Samir S. Khoury
Signatory's Position: Attorney of Record, Ohio Bar Member

Signatory's Phone Number: 2165669700

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: 87114506
Internet Transmission Date: Tue May 09 10:52:13 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20170509105213157
471-87114506-590ea651f01e7e85c5d7959973c
bc86b481cf3f991ba916ef56694e3611416bd-N/
A-N/A-20170509104102863170