| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87316485 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87316485/mark.png |
| LITERAL ELEMENT | FLIP |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
RE: Serial No.: 87316485 Mark: FLIP Applicant: DES Products Ltd. Office Action of: May 1, 2017
INTRODUCTION The Examining Attorney has refused registration of Applicant's FLIP mark (Applicant's Mark) under Section 2(d) on the basis that there may be a likelihood of confusion between Applicant's Mark and U.S. Registration No. 4839858 for the design mark, FLIP owned by VooDoo Science, LLC. CONSENT AGREEMENT Applicant respectfully disagrees with the Examining Attorney's arguments regarding the trademark eligibility of Applicant's Mark and reserves the right to refute those arguments at a later date, if necessary. That notwithstanding, Applicant and Registrant have entered into a consent agreement whereby Registrant agrees that the marks are not likely to be confused and Registrant consents to the registration of Applicant's Mark (Exhibit A) Amendment of Identification of Goods The Examining Attorney has requested clarification of the identification of goods for the subject mark. In response to the Examining Attorney's request and in an effort to further distinguish the relevant marks (per the consent agreement), Applicant proposes the following amended identification of goods: "Electronic vaporizers and vape pens for producing vapors to be inhaled by users" The Examining Attorney requested that Applicant clarify that Applicant's goods, specifically, electronic vaporizers and pens, are used for "smoking purposes." (Office Action, p. 3) However, Applicant's goods are not used for smoking purposes; they are used for vaping purposes. Please see attached Exhibit B which distinguishes the difference between smoking and vaping. CONCLUSION For the reasons stated above, Applicant requests the Examining Attorney withdraw the refusal and approve Applicant's Mark for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_389824798-20170808160313731138_._DPD-TM003_Exhibit_A_1_.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_389824798-20170808160313731138_._DPD-TM003_Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0006.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\873\164\87316485\xml4\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - Consent Agreement and Exhibit B - Evidence |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 034 |
| DESCRIPTION | |
| Electronic vaporizers and atomizers, vape pens, and advanced personal vaporizers; components for electronic vaporizers and atomizers, vape pens, and advanced personal vaporizers, namely, electronic vaping mods, bumpers, caps, cartridges, cartomizers, clearomizers, coils, cones, drip tips, and vape pen refilling tools; flavored e-juice and e-liquid for use in electronic vaporizers and atomizers, vape pens, and advanced personal vaporizers; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges and tanks; e-liquid for use in electronic vaporizers and atomizers | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/27/2017 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/27/2017 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 034 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Electronic vaporizers and vape pens for producing vapors to be inhaled | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/27/2017 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/27/2017 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Dionne Heard/ |
| SIGNATORY'S NAME | Dionne Heard |
| SIGNATORY'S POSITION | Associate Attorney, Volpe and Koenig, P.C., New Jersey Bar Member |
| SIGNATORY'S PHONE NUMBER | 215-568-6400 |
| DATE SIGNED | 08/08/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 08 17:52:05 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 170808175205889108-873164 85-51027dfb721d9d3edb9a47 12d267a73fbfff4c742b1ab6e e4e72f194395f204f-N/A-N/A -20170808160313731138 |
| 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) |
RE: Serial No.: 87316485
Mark: FLIP
Applicant: DES Products Ltd.
Office Action of: May 1, 2017
APPLICANT’S RESPONSE TO OFFICE ACTION
DES Products Ltd. (“Applicant”) responds as follows to the Office Action dated May 1, 2017 issued in connection to Trademark Serial No. 8591336 for the mark FLIP.
INTRODUCTION
The Examining Attorney has refused registration of Applicant's FLIP mark (Applicant's Mark) under Section 2(d) on the basis that there may be a likelihood of confusion between Applicant's Mark and U.S. Registration No. 4839858 for the design mark, FLIP owned by VooDoo Science, LLC.
CONSENT AGREEMENT
Applicant respectfully disagrees with the Examining Attorney's arguments regarding the trademark eligibility of Applicant's Mark and reserves the right to refute those arguments at a later date, if necessary. That notwithstanding, Applicant and Registrant have entered into a consent agreement whereby Registrant agrees that the marks are not likely to be confused and Registrant consents to the registration of Applicant's Mark (Exhibit A)
Amendment of Identification of Goods
The Examining Attorney has requested clarification of the identification of goods for the subject mark. In response to the Examining Attorney's request and in an effort to further distinguish the relevant marks (per the consent agreement), Applicant proposes the following amended identification of goods:
"Electronic vaporizers and vape pens for producing vapors to be inhaled by users"
The Examining Attorney requested that Applicant clarify that Applicant's goods, specifically, electronic vaporizers and pens, are used for "smoking purposes." (Office Action, p. 3) However, Applicant's goods are not used for smoking purposes; they are used for vaping purposes. Please see attached Exhibit B which distinguishes the difference between smoking and vaping.
CONCLUSION
For the reasons stated above, Applicant requests the Examining Attorney withdraw the refusal and approve Applicant's Mark for publication.
