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. 88149213 PIRELLI (Stylized and/or with Design, see http://uspto.report/TM/88149213/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Response to non-final refusal pursuant to Trademark Act Section 2(e)(4) and exhibit thereto has been attached.
Original PDF file:
evi_19294203253-20190509161001597412_._ized_-_Response_to_Non-final_Refusal_-_May_9_2019_-_88149213.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Game programs for arcade video game machines; batteries for home video game consoles used with televisions; batteries for mobile computer terminals; cleaning discs for cleaning the lens of DVD players; consumer electronic products, namely, audio receivers, electrical audio and speaker cables and connectors; home theater systems comprising DVD players, audio recorders; video recorders; digital cameras; television receivers; modems; microphones for telecommunication apparatus; headphones for mobile computer terminals; microphones for mobile computer terminals; straps for mobile phones; smart phones; cellular phones; set-top boxes; optical disc players; optical disc audio and video recorders; DVD players; DVD recorders; compact disc players; compact disc audio and video recorders; navigation apparatus for vehicles in the nature of on-board computers; electric capacitors for telecommunication apparatus; receiving television tuners for television broadcasting; Web cameras; video cameras; head-mounted video displays; three-dimensional active-shutter eyewear products, namely, 3D spectacles; three-dimensional display device, namely, flat panel display screen; memory cards; downloadable electronic game programs via mobile computer terminals; mobile computer terminal devices in the nature of computer terminals; keyboards for mobile computer terminals; computer mouse for mobile computer terminals; computer game programs for mobile phones; optical computer mouse; electronic tags for goods; personal digital assistants; touch panels for computer; tablet computer; computer operating programs; computer game programs; electronic book readers; video game programs for home video game consoles used with televisions; video game programs for hand-held games with liquid crystal displays; prerecorded audio compact discs featuring music; phonograph records featuring music; sound recorded magnetic cards, sheets and tapes; downloadable music files via the Internet; downloadable standby image containing video game characters for cellular telephones; downloadable ring tones for mobile phones; microphones for home video game consoles used with televisions; keyboards for home video game consoles used with televisions
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: Class 009 for Game programs for arcade video game machines; batteries for home video game consoles used with televisions; batteries for mobile computer terminals; cleaning discs for cleaning the lens of DVD players; consumer electronic products, namely, audio receivers, electrical audio and speaker cables and connectors; home theater systems comprising DVD players, audio recorders; video recorders; digital cameras; television receivers; modems; microphones for telecommunication apparatus; headphones for mobile computer terminals; microphones for mobile computer terminals; straps for mobile phones; smart phones; cellular phones; set-top boxes; optical disc players; optical disc audio and video recorders; DVD players; DVD recorders; compact disc players; compact disc audio and video recorders; navigation apparatus for vehicles in the nature of on-board computers; electric capacitors for telecommunication apparatus; receiving television tuners for television broadcasting; Web cameras; video cameras; head-mounted video displays; three-dimensional active-shutter eyewear products, namely, 3D spectacles; three-dimensional display device, namely, flat panel display screen; memory cards; downloadable electronic game programs via mobile computer terminals; mobile computer terminal devices in the nature of computer terminals; keyboards for mobile computer terminals; computer mouse for mobile computer terminals; computer game programs for mobile phones; optical computer mouse; electronic tags for goods; personal digital assistants; touch panels for computer; tablet computer; computer operating programs; computer game programs; electronic book readers; video game programs for home video game consoles used with televisions; video game programs for hand-held games with liquid crystal displays; prerecorded audio compact discs featuring music; phonograph records featuring music; sound recorded magnetic cards, sheets and tapes; downloadable music files via the Internet; downloadable standby image containing video game characters for cellular telephones; downloadable ring tones for mobile phones; microphones for home video game consoles used with televisions; keyboards for home video game consoles used with televisions
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 007037435 registered 04/20/2009 with a renewal date of 06/15/2018 and an expiration date of 07/04/2028 ], 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:
FRU0-19294203253-161001597_._Certified_Copy_of_EU_Reg._No._007037435_-_PIRELLI_Stylized.pdf
Converted PDF file(s) ( 13 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Jewelry; bracelets of precious metals; brooches; cuff-links; diamonds; earrings; necklaces; pearls; precious metals and their alloys; rings, bracelets, charms; earrings in precious metal or coated therewith; precious stones
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: Jewelry; bracelets of precious metals; brooches; brooches being jewelry; cuff-links; diamonds; earrings; necklaces; pearls; precious metals and their alloys; rings, bracelets, charms; rings; bracelets; charms for jewelry; earrings in precious metal or coated therewith; precious stonesClass 014 for Jewelry; bracelets of precious metals; brooches being jewelry; cuff-links; diamonds; earrings; necklaces; pearls; precious metals and their alloys; rings; bracelets; charms for jewelry; earrings in precious metal or coated therewith; precious stones
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 000319319 registered 10/29/1998 with a renewal date of 06/09/2016 and an expiration date of 06/05/2026 ], 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:
FRU1-1-19294203253-161001597_._Certified_Copy_of_EU_Reg._No._000319319_-_PIRELLI_Stylized.pdf
Converted PDF file(s) ( 20 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Coin-operated arcade video game machines; amusement game machines for use in amusement parks other than arcade video game machines; toy action figures; cards for trading card games; mini-car toys; toy model rockets; astronaut-shaped toy figures; electronic action toy figures; electronic games for the teaching of children; home video game consoles used with televisions; video game joysticks exclusively for use with home video game consoles used with televisions; parts and accessories specially adapted for home video game consoles used with televisions, namely, controllers for game consoles, stands for video game consoles, fitted plastic films known as skins for covering and protecting video game consoles; protective carrying cases specially adapted for handheld video games; hand-held games with liquid crystal displays; parts and accessories for handheld games with liquid crystal displays, namely, bags specially adapted for handheld video game units with liquid crystal displays, protective covers specially adapted for handheld video game units with liquid crystal displays, stands for handheld video game units with liquid crystal displays, fitted plastic films known as skins for covering and protecting handheld video game units with liquid crystal displays; motor controllers and planes; dolls; dice games; game cards; chess games; checker sets; playing cards; trading card games; dominoes; billiard equipment; computer game joysticks; radio control receivers and transmitters for model toys
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: Coin-operated arcade video game machines; amusement game machines for use in amusement parks other than arcade video game machines; toy action figures; cards for trading card games; mini-car toys; toy model rockets; astronaut-shaped toy figures; electronic action toy figures; electronic games for the teaching of children; home video game consoles used with televisions; video game joysticks exclusively for use with home video game consoles used with televisions; parts and accessories specially adapted for home video game consoles used with televisions, namely, controllers for game consoles, stands for video game consoles, fitted plastic films known as skins for covering and protecting video game consoles; protective carrying cases specially adapted for handheld video games; hand-held games with liquid crystal displays; parts and accessories for handheld games with liquid crystal displays, namely, bags specially adapted for handheld video game units with liquid crystal displays, protective covers specially adapted for handheld video game units with liquid crystal displays, stands for handheld video game units with liquid crystal displays, fitted plastic films known as skins for covering and protecting handheld video game units with liquid crystal displays; motor controllers and planes; remote control toys, namely, cars and airplanes; dolls; dice games; game cards; chess games; checker sets; playing cards; trading card games; dominoes; billiard equipment; computer game joysticks; radio control receivers and transmitters for model toys; radio control receivers and transmitters for use with radio-controlled model toy vehiclesClass 028 for Coin-operated arcade video game machines; amusement game machines for use in amusement parks other than arcade video game machines; toy action figures; cards for trading card games; mini-car toys; toy model rockets; astronaut-shaped toy figures; electronic action toy figures; electronic games for the teaching of children; home video game consoles used with televisions; video game joysticks exclusively for use with home video game consoles used with televisions; parts and accessories specially adapted for home video game consoles used with televisions, namely, controllers for game consoles, stands for video game consoles, fitted plastic films known as skins for covering and protecting video game consoles; protective carrying cases specially adapted for handheld video games; hand-held games with liquid crystal displays; parts and accessories for handheld games with liquid crystal displays, namely, bags specially adapted for handheld video game units with liquid crystal displays, protective covers specially adapted for handheld video game units with liquid crystal displays, stands for handheld video game units with liquid crystal displays, fitted plastic films known as skins for covering and protecting handheld video game units with liquid crystal displays; remote control toys, namely, cars and airplanes; dolls; dice games; game cards; chess games; checker sets; playing cards; trading card games; dominoes; billiard equipment; computer game joysticks; radio control receivers and transmitters for use with radio-controlled model toy vehicles
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 007037435 registered 04/20/2009 with a renewal date of 06/15/2018 and an expiration date of 07/04/2028 ], 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:
FRU2-19294203253-161001597_._Certified_Copy_of_EU_Reg._No._007037435_-_PIRELLI_Stylized.pdf
Converted PDF file(s) ( 13 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13

ADDITIONAL STATEMENTS
Miscellaneous Statement
Pursuant to Trademark Manual of Examining Procedure (TMEP) §806.03(j)(ii), Applicant requests to substitute a §44(e) basis and requests that the §1(b) basis be retained only in the event the examining attorney rejects the §44(e) basis. Pursuant to TMEP §1002.03, Applicant claims the benefits of §44 based on registration of an EU trademark because Applicant's country of origin, Italy, is an EU member.


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /StevenBPowell/     Date: 05/09/2019
Signatory's Name: Steven B. Powell
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: (202) 344-4536

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: 88149213
Internet Transmission Date: Thu May 09 17:01:55 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201905091701553
10995-88149213-6202289816434873f996b91ff
59a9fdd39c1c5fb72b6d1172fc4734b76aad9921
-N/A-N/A-20190509161001597412