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. 88056751 KAPPA(Standard Characters, see http://uspto.report/TM/88056751/mark.png) has been amended as follows:

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

 

Applicant submits that there is no likelihood of confusion with the marks of the four cited registrations because (1) two companies own those registrations, which means that they are limited in scope, (2) applicant has clarified its particular list of goods that are different than the goods covered by the cited registrations, and (3) applicant’s goods are directed to different consumers compared to the targeted consumers of the goods of the two registrants. 

 

Applicant also notes that the cited application is now dead.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for (Based on Intent to Use) Bags adapted for laptops; sleeves for laptops; covers and cases for smartphones; covers and cases for tablet computers; camera covers; ear buds; headphones; (Based on 44(e)) Spectacles; spectacles frames; spectacles lenses; sunglasses; eyeglass and masks cases; protective masks; goggles and masks for sport activities; protective helmets; protective helmets for sports; protective clothing for sports; protective apparatus for back and other parts of the body; clothing, footwear and gloves for protection against accidents, irradiation and fire; video games programs
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 3137395 registered __________ with a renewal date of __________ and an expiration date of __________ ], 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.

Proposed:
Tracked Text Description: (Based on Intent to Use) Bags adapted for laptops; Spectacles; spectacles frames; spectacles lenses; sunglasses; camera covers; eyeglass and protective masks cases; ear buds; protective masks; headphones; goggles and protective masks for sport activities; (Based on 44(e)) Spectacles; protective helmets; protective helmets for sports; protective clothing for sports, namely, articles of protective clothing with built in armor for protection against life-threatening accident or injury for use in hockey, golf, snowboard, ski, trekking, football, soccer, basket, rugby, volley, rowing, motor racing, motorcycling, running, boxing, martial arts, judo, karate, Taekwondo, skating, cycling and gymnastic; clothing, footwear and gloves for protection against accidents, irradiation and fire; eyeglass and masks cases; bags adapted for laptops; sleeves for laptops; goggles and masks for sport activities; covers and cases for smartphones; covers and cases for tablet computers; video games programs.; protective clothing for sports; protective apparatus for back and other parts of the body; video games programsClass 009 for Spectacles; spectacles frames; spectacles lenses; sunglasses; eyeglass and protective masks cases; protective masks; goggles and protective masks for sport activities; protective helmets; protective helmets for sports; protective clothing for sports, namely, articles of protective clothing with built in armor for protection against life-threatening accident or injury for use in hockey, golf, snowboard, ski, trekking, football, soccer, basket, rugby, volley, rowing, motor racing, motorcycling, running, boxing, martial arts, judo, karate, Taekwondo, skating, cycling and gymnastic; clothing, footwear and gloves for protection against accidents, irradiation and fire; bags adapted for laptops; sleeves for laptops; covers and cases for smartphones; covers and cases for tablet computers; video games programs.
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 003137395 registered 12/02/2004 with a renewal date of 04/17/2013 and an expiration date of 04/17/2023 ], 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:
FRU0-65207123177-205151781_._6905-0015_eutm_reg_cert.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 028 for Protective clothing for sports, namely protective shorts and suits for cycling and protective suits for ski, football shoulder pads, protective bras for martial arts, protective supports for shoulders and elbows, protective padding and shin guards, chin guards, elbow guards, knees and wrists guards for hockey, golf, snowboard, ski, trekking, football, soccer, basket, rugby, volley, rowing, motor racing, motorcycling, running, boxing, martial arts, judo, karate, Taekwondo, skating, cycling and gymnastics; Protective apparatus for back and other parts of the body, namely, body protector for hockey, golf, snowboard, ski, trekking, football, soccer, basket, rugby, volley, rowing, motor racing, motorcycling, running, boxing, martial arts, judo, karate, Taekwondo, skating, cycling and gymnastics.
Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ European Union Trademark - EUTM registration number 003137395 registered 12/02/2004 with a renewal date of 04/17/2013 and an expiration date of 04/17/2023 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-65207123177-205151781_._6905-0015_eutm_reg_cert.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Office Action calls for a special format drawing, but no special format drawing is required because the trademark is a standard character mark.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /dmb/      Date: 05/16/2019
Signatory's Name: Duane M. Byers
Signatory's Position: Attorney of record, Virginia bar member
Signatory's Phone Number: 7037867421


Response Signature
Signature: /dmb/     Date: 05/16/2019
Signatory's Name: Duane M. Byers
Signatory's Position: Attorney of record, Virginia bar member

Signatory's Phone Number: 7037867421

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.

        
RAM Sale Number: 88056751
RAM Accounting Date: 05/17/2019
        
Serial Number: 88056751
Internet Transmission Date: Thu May 16 21:11:02 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201905162111026
02203-88056751-62077a27b399043253111de83
3deab5664fe2afed365ac8fcc240ef6eb6599ae1
c2-CC-18629-20190516205151781087