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 09/20/2020)

Response to Office Action

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER87513286
LAW OFFICE ASSIGNEDLAW OFFICE 116
MARK SECTION
MARK https://tmng-al.uspto.gov/resting2/api/img/87513286/large
LITERAL ELEMENT DOMINATOR
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)
On September 27, 2017, the Examining Attorney issued an initial office action for Application No. 87/513,286 (TM: DOMINATOR), preliminarily refusing registration on the basis that the specimen does not show the applied- for mark in the drawing in use in commerce. Specifically, the Examining Attorney stated that the mark on the drawing is DOMINATOR, while the mark on the specimen appears as DOMINATOR V3. Applicant confirms that the additional element, V3, seen on the specimen is not part of the mark. Rather, it is merely a model number in a notation Applicant has used to denote the various generations of the DOMINATOR products. See attached evidence of past products using similar notation. Since ?V3? is merely a model number, the mark of the drawing and that shown on the originally submitted specimen agree. See In re Sansui Elec. Co., 194 USPQ 202, 203 (TTAB 1977) (holding the marks ?QSE? and ?QSD? on the drawing agree with the wording ?QSE- 4? and ?QSD-4? appearing on the specimens, where the notation ?4? was merely a model number and the additional evidence showed use of the mark with various changing model numbers used to designate successive generations of equipment). Based on the above and the attached evidence, Applicant respectfully requests that this refusal be withdrawn.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILEevi_963916862-20171130133607062735_._DOMINATOR-87513286-ROA_Evidence_Dominator_V1.pdf
       CONVERTED PDF FILE(S)
       (2 pages) 		\\TICRS\EXPORT17\IMAGEOUT17\875\132\87513286\xml4\ROA0002.JPG
       \\TICRS\EXPORT17\IMAGEOUT17\875\132\87513286\xml4\ROA0003.JPG
       ORIGINAL PDF FILEevi_963916862-20171130133607062735_._DOMINATOR-87513286-ROA_Evidence_Dominator_V2.pdf
       CONVERTED PDF FILE(S)
       (1 page) 		\\TICRS\EXPORT17\IMAGEOUT17\875\132\87513286\xml4\ROA0004.JPG
DESCRIPTION OF EVIDENCE FILEWebpages showing legacy DOMINATOR products using the same notation to denote model numbers as seen in the originally submitted specimen.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS009
DESCRIPTION
First-person view (FPV) electronic goggles; first-person view (FPV) headsets for use with unmanned vehicles
FILING BASISSection 1(a)
        FIRST USE ANYWHERE DATE At least as early as 00/00/2012
        FIRST USE IN COMMERCE DATE At least as early as 00/00/2012
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS009
TRACKED TEXT DESCRIPTION
First-person view (FPV) electronic goggles; First-person view (FPV) electronic virtual reality goggles; first-person view (FPV) headsets for use with unmanned vehicles
FINAL DESCRIPTION
First-person view (FPV) electronic virtual reality goggles; first-person view (FPV) headsets for use with unmanned vehicles
FILING BASISSection 1(a)
       FIRST USE ANYWHERE DATE At least as early as 00/00/2012
       FIRST USE IN COMMERCE DATE At least as early as 00/00/2012
CORRESPONDENCE SECTION
ORIGINAL ADDRESS KRISTA S. JACOBSEN
JACOBSEN IP LAW
1999 S. BASCOM AVENUE, STE. 700
CAMPBELL
California
US
95008
NEW CORRESPONDENCE SECTION
NAME KRISTA S. JACOBSEN
FIRM NAME JACOBSEN IP LAW
STREET 1999 S. BASCOM AVENUE, STE. 700
CITY CAMPBELL
STATE California
ZIP/POSTAL CODE 95008
COUNTRY United States
PHONE 408-455-5539
EMAIL krista@jacobseniplaw.com;leah@jacobseniplaw.com
AUTHORIZED EMAIL COMMUNICATION Yes
SIGNATURE SECTION
RESPONSE SIGNATURE /Leah Z. Halpert/
SIGNATORY'S NAME Leah Z. Halpert
SIGNATORY'S POSITION Attorney of record, CA bar member
DATE SIGNED 11/30/2017
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Thu Nov 30 13:41:37 EST 2017
TEAS STAMP USPTO/ROA-XX.XX.XXX.XX-20
171130134137956674-875132
86-5103af0eeecb9cefca4ede
4134d649812d47ad3ba2dfddb
64ddab353cc9cee1d7a-N/A-N
/A-20171130133607062735


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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87513286 DOMINATOR(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87513286/large) has been amended as follows:

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

On September 27, 2017, the Examining Attorney issued an initial office action for Application No. 87/513,286 (TM: DOMINATOR), preliminarily refusing registration on the basis that the specimen does not show the applied- for mark in the drawing in use in commerce. Specifically, the Examining Attorney stated that the mark on the drawing is DOMINATOR, while the mark on the specimen appears as DOMINATOR V3. Applicant confirms that the additional element, V3, seen on the specimen is not part of the mark. Rather, it is merely a model number in a notation Applicant has used to denote the various generations of the DOMINATOR products. See attached evidence of past products using similar notation. Since ?V3? is merely a model number, the mark of the drawing and that shown on the originally submitted specimen agree. See In re Sansui Elec. Co., 194 USPQ 202, 203 (TTAB 1977) (holding the marks ?QSE? and ?QSD? on the drawing agree with the wording ?QSE- 4? and ?QSD-4? appearing on the specimens, where the notation ?4? was merely a model number and the additional evidence showed use of the mark with various changing model numbers used to designate successive generations of equipment). Based on the above and the attached evidence, Applicant respectfully requests that this refusal be withdrawn.

EVIDENCE
Evidence in the nature of Webpages showing legacy DOMINATOR products using the same notation to denote model numbers as seen in the originally submitted specimen. has been attached.
Original PDF file:
evi_963916862-20171130133607062735_._DOMINATOR-87513286-ROA_Evidence_Dominator_V1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_963916862-20171130133607062735_._DOMINATOR-87513286-ROA_Evidence_Dominator_V2.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for First-person view (FPV) electronic goggles; first-person view (FPV) headsets for use with unmanned vehicles
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 00/00/2012 and first used in commerce at least as early as 00/00/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: First-person view (FPV) electronic goggles; First-person view (FPV) electronic virtual reality goggles; first-person view (FPV) headsets for use with unmanned vehicles

Class 009 for First-person view (FPV) electronic virtual reality goggles; first-person view (FPV) headsets for use with unmanned vehicles
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 00/00/2012 and first used in commerce at least as early as 00/00/2012 , and is now in use in such commerce.
CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
KRISTA S. JACOBSEN
JACOBSEN IP LAW
1999 S. BASCOM AVENUE, STE. 700
CAMPBELL
California
US
95008

Proposed:
KRISTA S. JACOBSEN of JACOBSEN IP LAW, having an address of
1999 S. BASCOM AVENUE, STE. 700 CAMPBELL, California 95008
United States
krista@jacobseniplaw.com;leah@jacobseniplaw.com
408-455-5539



SIGNATURE(S)
Response Signature
Signature: /Leah Z. Halpert/     Date: 11/30/2017
Signatory's Name: Leah Z. Halpert
Signatory's Position: Attorney of record, CA bar member

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.

Mailing Address:    KRISTA S. JACOBSEN
   JACOBSEN IP LAW
   1999 S. BASCOM AVENUE, STE. 700
   CAMPBELL, California 95008
        
Serial Number: 87513286
Internet Transmission Date: Thu Nov 30 13:41:37 EST 2017
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20171130134137956
674-87513286-5103af0eeecb9cefca4ede4134d
649812d47ad3ba2dfddb64ddab353cc9cee1d7a-
N/A-N/A-20171130133607062735