| 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) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 88182582 | ||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 121 | ||||||||
| MARK SECTION | |||||||||
| MARK | http://uspto.report/TM/88182582/mark.png | ||||||||
| LITERAL ELEMENT | PERCEPT | ||||||||
| 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) | |||||||||
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In the United States Patent and Trademark Office
Percept
Attorney Docket # PCP 7010
Response to Trademark Office Action
This paper is responsive to the Trademark Office Action dated above.
Applicant’s attorney respectfully requests a telephone call from the Examining Attorney if there is any comment or question the Examining Attorney might have, or if there is any way that Applicant can advance this Application to allowance and registration.
Table of Contents Response to Trademark Office Action. 1 Remarks. 3 1 --- § 2(d) refusal – likelihood of confusion. 3 2 --- Identification of goods. 4 Request for Early Allowance and Registration. 6
Remarks
1 --- § 2(d) refusal – likelihood of confusion
The Office Letter refuses registration on 15 USC § 1052(d) grounds, as allegedly because of likelihood of confusion with Reg. No. 4,692,434 (“Percept”) (“Registrant’s mark”). Office Letter 1. Applicant respectfully traverses.
The Office Letter states that Applicant’s mark “Percept” (in standard characters) for “eyewear; 3D eyewear; eyeglasses; optical glasses; optical lenses; spectacles; 3D spectacles” is confusingly similar with Registrant’s mark for “sunglasses”. Office Letter 2-3.
Notwithstanding traverse, Applicant has deleted the goods the Office Letter states would be confusingly similar (Office Letter 2) with respect to goods that are allegedly related (Office Letter 3). Applicant’s identification of goods no longer includes goods that are related for purposes of likelihood of confusion analysis.
The Office Letter considers only two of the du Pont factors: (1) the similarities between the compared marks and (2) the relatedness of the compared goods or services. Office Letter 1. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (describing “du Pont factors”). Applicant respectfully suggests that, with deletion of goods that were asserted to be related for purposes of likelihood of confusion analysis, there is no longer any likelihood of confusion. The only similarity that remains is with respect to goods that are not related for purposes of likelihood of confusion analysis.
Applicant respectfully requests removal of the refusal to register. Applicant makes no admission that the original refusal was correct as to fact or law.
2 --- Identification of goods
The Office Letter states that the identification of goods must be clarified. Office Letter 3. Applicant respectfully traverses.
Notwithstanding traverse, Applicant has rewritten the identification of goods to address the concerns noted in the Office Letter.
Applicant has generally adopted the wording suggested by the Examining Attorney. Office Letter 3. As noted above, Applicant also respectfully requests deletion of “eyewear; 3D eyewear; eyeglasses;” and “optical glasses; optical lenses; spectacles; 3D spectacles” from the identification of goods. Changes are shown below in markup and strikeout, in bold:
In classes 028 and 042: (as applied for) In class 009: Computer hardware; downloadable operating system software; downloadable computer software for virtual reality
visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; computer peripherals; wearable computers in the nature of
communication devices, gesture sensors, motion sensors, music players, audio recorders, video recorders, personal digital assistants, and smartwatches; wearable computer peripherals in
the nature of radio-enabled wristbands, armbands, headbands, headgear, communication devices, gesture sensors, motion sensors, music players, audio recorders, and video recorders; virtual
reality headsets for use in visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; computer peripherals for mobile devices
for remotely accessing and transmitting data; computer peripherals for displaying data and video; downloadable computer software, namely, software for setting up, operating,
configuring, and controlling wearable computer hardware and wearable computer peripherals; carrying cases and holders for use with virtual reality headsets; apparatus for recording, transmission or
reproduction of sound, images, or data; electronic and optical communications instruments and components, namely, display screens for virtual reality visualization, manipulation, immersion and
integration of audio, video, text, binary, still images, graphics and multimedia files; Applicant thanks the Examining Attorney for suggesting acceptable wording for the identification of goods. The rewritten identification of goods should be acceptable. Applicant respectfully requests acceptance thereof.
Applicant respectfully requests removal of the requirement for clarification. Applicant makes no admission that the original requirement was correct as to fact or law.
Request for Early Allowance and Registration
All claims are in condition for allowance. Applicant respectfully requests early reconsideration and reexamination, and rapid allowance.
If the Examiner has any comments, questions, or other communication that would help advance this Application to issue, Applicant respectfully requests a telephone call from the Examiner to Applicant’s attorney.
Applicant respectfully requests a telephone interview with the Examiner.
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| ATTORNEY SECTION (current) | |||||||||
| NAME | Steven Swernofsky | ||||||||
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED | ||||||||
| YEAR OF ADMISSION | NOT SPECIFIED | ||||||||
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED | ||||||||
| FIRM NAME | LOS ALTOS LAW | ||||||||
| STREET | PO BOX 1024 | ||||||||
| CITY | LOS ALTOS | ||||||||
| STATE | California | ||||||||
| POSTAL CODE | 94023 | ||||||||
| COUNTRY | US | ||||||||
| PHONE | 650-518-5080 | ||||||||
| sarah.swernofsky@losaltoslaw.com | |||||||||
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | ||||||||
| DOCKET/REFERENCE NUMBER | PCP 7010 | ||||||||
| ATTORNEY SECTION (proposed) | |||||||||
| NAME | Steven Swernofsky | ||||||||
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX | ||||||||
| YEAR OF ADMISSION | XXXX | ||||||||
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX | ||||||||
| FIRM NAME | LOS ALTOS LAW | ||||||||
| STREET | PO BOX 1024 | ||||||||
| CITY | LOS ALTOS | ||||||||
| STATE | California | ||||||||
| POSTAL CODE | 94023 | ||||||||
| COUNTRY | United States | ||||||||
| PHONE | 650-518-5080 | ||||||||
| sarah.swernofsky@losaltoslaw.com | |||||||||
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | ||||||||
| DOCKET/REFERENCE NUMBER | PCP 7010 | ||||||||
| CORRESPONDENCE SECTION (current) | |||||||||
| NAME | STEVEN SWERNOFSKY | ||||||||
| FIRM NAME | LOS ALTOS LAW | ||||||||
| STREET | PO BOX 1024 | ||||||||
| CITY | LOS ALTOS | ||||||||
| STATE | California | ||||||||
| POSTAL CODE | 94023 | ||||||||
| COUNTRY | US | ||||||||
| PHONE | 650-518-5080 | ||||||||
| sarah.swernofsky@losaltoslaw.com | |||||||||
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | ||||||||
| DOCKET/REFERENCE NUMBER | PCP 7010 | ||||||||
| CORRESPONDENCE SECTION (proposed) | |||||||||
| NAME | Steven Swernofsky | ||||||||
| FIRM NAME | LOS ALTOS LAW | ||||||||
| STREET | PO BOX 1024 | ||||||||
| CITY | LOS ALTOS | ||||||||
| STATE | California | ||||||||
| POSTAL CODE | 94023 | ||||||||
| COUNTRY | United States | ||||||||
| PHONE | 650-518-5080 | ||||||||
| sarah.swernofsky@losaltoslaw.com | |||||||||
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | ||||||||
| DOCKET/REFERENCE NUMBER | PCP 7010 | ||||||||
| SIGNATURE SECTION | |||||||||
| RESPONSE SIGNATURE | /Steven Swernofsky/ | ||||||||
| SIGNATORY'S NAME | Steven Swernofsky | ||||||||
| SIGNATORY'S POSITION | Attorney of record, CA State Bar member | ||||||||
| SIGNATORY'S PHONE NUMBER | 650-518-5080 | ||||||||
| DATE SIGNED | 08/08/2019 | ||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||
| FILING INFORMATION SECTION | |||||||||
| SUBMIT DATE | Thu Aug 08 17:00:40 EDT 2019 | ||||||||
| TEAS STAMP | USPTO/ROA-XXX.XXX.X.XXX-2 0190808170040481250-88182 582-61024adcbdce239cd2a92 54f5ccd9e597c2b364b6f2576 8149b5ba2e483b3b87e2d-N/A -N/A-20190808163115945891 |
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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) |
In the United States Patent and Trademark Office
|
Applicant: PERCEPT CORPORATION
Application Serial #: 88182582
Filing Date: Nov. 6, 2018 |
Law Office 121
Examining Attorney: George Murray (571) 270-5101 George.Murray@uspto.gov
Notification Date: Feb. 13, 2019 |
Percept
Attorney Docket # PCP 7010
This paper is responsive to the Trademark Office Action dated above.
Applicant’s attorney respectfully requests a telephone call from the Examining Attorney if there is any comment or question the Examining Attorney might have, or if there is any way that Applicant can advance this Application to allowance and registration.
Table of Contents
Response to Trademark Office Action. 1
Remarks. 3
1 --- § 2(d) refusal – likelihood of confusion. 3
2 --- Identification of goods. 4
Request for Early Allowance and Registration. 6
The Office Letter refuses registration on 15 USC § 1052(d) grounds, as allegedly because of likelihood of confusion with Reg. No. 4,692,434 (“Percept”) (“Registrant’s mark”). Office Letter 1. Applicant respectfully traverses.
The Office Letter states that Applicant’s mark “Percept” (in standard characters) for “eyewear; 3D eyewear; eyeglasses; optical glasses; optical lenses; spectacles; 3D spectacles” is confusingly similar with Registrant’s mark for “sunglasses”. Office Letter 2-3.
Notwithstanding traverse, Applicant has deleted the goods the Office Letter states would be confusingly similar (Office Letter 2) with respect to goods that are allegedly related (Office Letter 3). Applicant’s identification of goods no longer includes goods that are related for purposes of likelihood of confusion analysis.
The Office Letter considers only two of the du Pont factors: (1) the similarities between the compared marks and (2) the relatedness of the compared goods or services. Office Letter 1. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (describing “du Pont factors”). Applicant respectfully suggests that, with deletion of goods that were asserted to be related for purposes of likelihood of confusion analysis, there is no longer any likelihood of confusion. The only similarity that remains is with respect to goods that are not related for purposes of likelihood of confusion analysis.
Applicant respectfully requests removal of the refusal to register. Applicant makes no admission that the original refusal was correct as to fact or law.
The Office Letter states that the identification of goods must be clarified. Office Letter 3. Applicant respectfully traverses.
Notwithstanding traverse, Applicant has rewritten the identification of goods to address the concerns noted in the Office Letter.
Applicant has generally adopted the wording suggested by the Examining Attorney. Office Letter 3. As noted above, Applicant also respectfully requests deletion of “eyewear; 3D eyewear; eyeglasses;” and “optical glasses; optical lenses; spectacles; 3D spectacles” from the identification of goods. Changes are shown below in markup and strikeout, in bold:
In classes 028 and 042: (as applied for)
In class 009:
Computer hardware; downloadable operating system software; downloadable computer software for virtual reality
visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; computer peripherals; wearable computers in the nature of
communication devices, gesture sensors, motion sensors, music players, audio recorders, video recorders, personal digital assistants, and smartwatches; wearable computer peripherals in
the nature of radio-enabled wristbands, armbands, headbands, headgear, communication devices, gesture sensors, motion sensors, music players, audio recorders, and video recorders; virtual
reality headsets for use in visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; computer peripherals for mobile devices
for remotely accessing and transmitting data; computer peripherals for displaying data and video; downloadable computer software, namely, software for setting up, operating,
configuring, and controlling wearable computer hardware and wearable computer peripherals; carrying cases and holders for use with virtual reality headsets; apparatus for recording, transmission or
reproduction of sound, images, or data; electronic and optical communications instruments and components, namely, display screens for virtual reality visualization, manipulation, immersion and
integration of audio, video, text, binary, still images, graphics and multimedia files; eyewear; 3D eyewear; eyeglasses; optical devices, namely, eye pieces for helmet mounted displays;
optical glasses; optical lenses; spectacles; 3D spectacles; hologram apparatus; holographic apparatus for projecting holographic video, still images, graphics and multimedia
files; AND Computer gaming machines, videophones, prerecorded computer programs for personal information management, database management software, electronic mail and messaging
software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, namely, operating system programs, data
synchronization programs, and downloadable application development computer software programs for personal and handheld computers; downloadable software for the
redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld services from a data store on or associated with a personal computer or a server;
downloadable software for the synchronization of data between a remote station or device and a fixed or remote station or device
Applicant thanks the Examining Attorney for suggesting acceptable wording for the identification of goods. The rewritten identification of goods should be acceptable. Applicant respectfully requests acceptance thereof.
Applicant respectfully requests removal of the requirement for clarification. Applicant makes no admission that the original requirement was correct as to fact or law.
All claims are in condition for allowance. Applicant respectfully requests early reconsideration and reexamination, and rapid allowance.
If the Examiner has any comments, questions, or other communication that would help advance this Application to issue, Applicant respectfully requests a telephone call from the Examiner to Applicant’s attorney.
Applicant respectfully requests a telephone interview with the Examiner.
|
Aug. 2, 2019 |
/ Steven A. Swernofsky / |
|
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Steven A. Swernofsky, Esq. Reg. No. 33,040 (650) 799-2438 mobile steven.swernofsky@losaltoslaw.com |
|
Los Altos Law ™ steven.swernofsky@losaltoslaw.com sarah.swernofsky@losaltoslaw.com P.O. Box 1024 Los Altos, CA 94023 |
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