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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88013844 LYCOS(Standard Characters, see http://uspto.report/TM/88013844/mark.png) has been amended as follows:

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

In the Office Action dated October 22, 2018, the Examining Attorney raised a Section 2(d) refusal citing Reg. 4093780 LYKOS & Design owned by Hamilton Thorne, Inc. for "Scientific and laboratory equipment and apparatus, namely laser-based microdissection equipment consisting of a microscope objective with built-in infrared laser and LED locator beam, laser controller hardware, proprietary software for control of laser functions and cell imaging, CCD camera, and PC computer system comprised of computer, computer hardware, and operating system software for in vitro cell dissection and cell ablation for regenerative medicine, developmental biology and advanced cell biology applications." Applicant's LYCOS goods are "long-range dual camera system with a thermal imager and daytime camera, with video tracking." The Examining Attorney stated that the "respective goods are similar because they include cameras." In this Response, Applicant is requesting amendment of Applicant's goods to narrow them as follows: "long-range dual camera system with a thermal imager and daytime camera, with video tracking, for security, surveillance and Counter UAS (C-UAS) purposes" The goods in the cited Registration and in Applicant's amended application could not be more different. Hamilton Thorne's LYKOS cameras and related products are scientific and laboratory equipment used in microdissection of cells for regenerative medicine, developmental biology and advanced cell biology applications. Attached as Exhibit A is a webpage downloaded March 12, 2019 for Hamilton Thorne's LYKOS product, which is used to "facilitate removal of cells from an embryo during the trophectoderm biopsy process." In contrast, Moog's LYCOS cameras and related products are used to track enemy drones and other unmanned aerial systems (UAS) in military operations and surveillance situations. Attached as Exhibit B is a webpage downloaded March 12, 2019 for Moog's LYCOS system, which is "ideal for applications requiring high accuracy and precision, such as Counter-UAS, trajectory analysis, and weapons scoring." Given the narrowing of the description of goods, and the significant differences in the goods, customers, channels of trade, and uses of the products, Applicant respectfully requests withdrawal of the Section 2(d) refusal.

EVIDENCE
Evidence in the nature of Exihibit A is a webpage describing the Hamilton Thorne LYKOS system, and Exhibit B is a webpage describing Applicant's LYCOS system. has been attached.
Original PDF file:
evi_216136402-20190312163100665995_._Exhibit_A_Hamilton_Thorne_LYKOS_system.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_216136402-20190312163100665995_._Exhibit_B_Moog_LYCOS_system.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 long-range dual camera system with a thermal imager and daytime camera, with video tracking
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: long-range dual camera system with a thermal imager and daytime camera, with video tracking; long-range dual camera system with a thermal imager and daytime camera, with video tracking, for security, surveillance and Counter UAS (C-UAS) purposesClass 009 for long-range dual camera system with a thermal imager and daytime camera, with video tracking, for security, surveillance and Counter UAS (C-UAS) purposes
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.

SIGNATURE(S)
Response Signature
Signature: /afd/     Date: 03/12/2019
Signatory's Name: Anne F. Downey
Signatory's Position: Attorney licensed in NY, an associate of the attorney of record

Signatory's Phone Number: 7168443768

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: 88013844
Internet Transmission Date: Tue Mar 12 17:06:53 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190312170653182
933-88013844-6206bc8c29b50621bd723c5b8a7
bbe7f81d8f585ce90eb74c088e6c0329a80016-N
/A-N/A-20190312163100665995