TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88250356 CHLOE(Standard Characters, see http://uspto.report/TM/88250356/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

In response to the communication mailed March 28, 2019, please reconsider the above captioned application in view of the remarks provided below. IDENTIFICATION OF THE GOODS: Please delete the originally submitted identification of the goods and recitation of the services and substitute therefor: International Class 9: A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations. International Class 35: Product selection and order fulfillment mechanism, namely, providing commercial information and advice for consumers in the nature of website assistance and product information for the purpose of assisting with the selection of general consumer merchandise. International Class 42: Platform as a service (PAAS) featuring a computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping. REMARKS In the Office Action dated March 28, 2019, the sole issue raised, apart from the requirement for clarification of the identification of the goods and recitation of the services was the refusal to register the present mark under Section 2(d) of the Trademark Act. The Office Action alleged that Applicant?s mark, when used on or in connection with the identified goods and services, so resembles the marks in U.S. Registration No. 4,974,077 and U.S. Registration No. 4,468,931 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully traverses and/or responds to this refusal in view of the facts and arguments provided below. The present mark is registrable on the Principal Register due to: (1) the dissimilarity and nature of the goods and services, (2) the care with which the goods and services associated with the marks are purchased, (3) the channels of trade in which the respective goods are sold, and (4) the weakness of the cited marks. All these factors require a conclusion that there is no likelihood of confusion between the marks. I. The present mark is not confusingly similar to another U.S. Trademark registration. The case of E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (hereinafter cited as du Pont), provides crucial guidance in the instant case. As is well known, the du Pont case indicates that "there is no litmus rule which can provide a ready guide to all cases" of determining likelihood of confusion under Section 2(d). 177 U.S.P.Q. at 567. Advantageously, the du Pont case provides a list of evidentiary elements to be considered in an analysis under Section 2(d). Importantly, one or more evidentiary elements may, from case to case, play a dominant role, with no particular evidentiary element always having merit greater than the others. Provided below is a discussion of the pertinent evidentiary elements from du Pont and the applicable facts in the instant case, all of which lead to a conclusion that there is no likelihood of confusion between the marks in question. A. The goods and services of Applicant are dissimilar from the goods and services associated with the cited marks. The du Pont case indicates that the "similarity or dissimilarity and nature of the goods or services as described in an application or registration", 177 U.S.P.Q. at 567, is to be considered in an analysis under Section 2(d). U.S. Registration No. 4,974,077 of the mark ASHLEY CHLOE lists ?Computer application software for mobile phones, namely, software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers; . . . Computer software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers that may be downloaded from a global computer network? as the goods in Class 9. In contrast, the goods of the present application in Class 9 are ?A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations.? Applicant?s goods in Class 9 are different from the ?077 goods for at least the reasons that Applicant?s goods are for multiple users, whereas there is not indication that the ?077 goods can involve multiple users, and Applicant?s goods are a chatbot, whereas there is likewise no indication that the ?077 goods can be identified as a chatbot. A chatbot is a computer program designed to stimulate conversation with human users, especially over the Internet. There is no indication that the ?077 computer program is designed to stimulate conversation between the computer and human users. Further, Applicant?s services in Classes 35 and 42 have no apparent corresponding services with the ?077 mark. Applicant?s services in Class 35 of providing commercial information and advice for consumers in the nature of website assistance and product information for the purpose of assisting with the selection of general consumer merchandise are not found in connection with the ?077 mark. Similarly, Applicant?s services in Class 42 of a computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping have no corresponding goods or services in connection with the ?077 mark. Therefore, there would be no likelihood of confusion between Applicant?s mark and the ?077 mark. Turning now to the allegation of similarity of goods and services between Applicant?s mark and the U.S. Registration No. 4,468,931 for CHLOE, the ?931 mark lists ?Retail store services in the field of? a long list of general consumer merchandise ?provided via the Internet and other electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising services? in Class 35. In contrast, Applicant?s goods in Class 9 are for ?A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations.? Nothing in the ?931 services is remotely similar to Applicant?s goods in Class 9. Providing retail store services over the Internet, providing sponsored links to third party websites, and advertising services are very different from a multiple user chatbot program. Similarly, Applicant?s services in Classes 35 and 42, which relate to (a) providing commercial information and advice for consumers in the nature of website assistance, and product information for the purpose of assisting with the selection of general consumer merchandise are not found in connection with the ?077 mark, and (b) a computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping, respectively, have no corresponding goods or services in connection with the ?931 mark. The Registrant of the ?931 mark deleted the entire classes of services for Classes 38, 42, and 45 when it filed its Combined Declaration of Use and Incontestability under Sections 8 & 15 on September 19, 2019. Thus, Applicant respectfully submits that services listed Class 38, 42, and 45 of the ?931 mark should not be considered when making a determination concerning Applicant?s registrability. For these reasons, consumers who encounter Applicant?s and Registrants? goods and services would not be likely to believe that they come from a common source. Accordingly, there is not likely to be confusion between the goods and services sold under the respective marks. B. Purchases of Applicant's goods and services and the goods and services associated with the cited marks are carefully made, further avoiding any likelihood of confusion. Still another evidentiary element raised by the du Pont case is the "conditions under which and buyers to whom sales are made, i.e., ‛impulse? vs. careful, sophisticated purchasing." 177 U.S.P.Q. at 567. None of the goods and services in question are the type that are purchased under conditions of ‛impulse? buying. Consumers of these types of goods and services are careful, sophisticated buyers. In particular, consumers that go the effort to engage in a chatbot conversation are displaying and exemplifying the type of care that a careful, sophisticated purchaser would take. The care with which purchases of the respective goods and services are made further supports the conclusion that there is no likelihood of confusion. C. The channels of trade in which Applicant?s goods and services and the goods and services associated with the cited marks are sold are different and do not support a finding of confusion in the present situation. The du Pont case also indicates that the "similarity or dissimilarity of established, likely-to-continue trade channels" is to be considered in an analysis under Section 2(d). Applicant?s goods and services are intended to be sold over the Internet from Applicant?s website. The ?077 goods are sold on the Internet at ashleychloe.com, and perhaps on other websites. The ?931 goods are sold on the Internet at chloe.com/us, and perhaps on other websites. Consumers will not be confused as to the source of Applicant?s goods and services when they encounter them on Applicant?s website. For these reasons, the differences in the channels of goods support a finding of no likelihood of confusion between Applicant?s mark and the cited marks. D. The cited marks are weak owing to the large number of registrations and applications containing the term CHLOE, including registrations and applications in Classes 9 and 35. Applicant searched the USPTO?s TESS database and found 272 records in all classes containing the term CHLOE. Exhibit A. In Class 9, there are 27 records containing the term CHLOE. Exhibit B. In Class 35, there are 26 records containing the term CHLOE. Exhibit C. In Class 42, there are 5 records containing the term CHLOE. Exhibit D. These data show that there are so many registrations and applications containing the term CHLOE that no registration can be given broad scope. In other words, the ?077 and ?931 registrations are weak and should not be impediments to registration of Applicant?s mark given differences in the du Pont factors discussed herein. II. In summary, in view of the additional facts presented herein, no likelihood of confusion arises in view of Applicant?s mark and the cited marks, and registration of Applicant's mark on the Principal Register is proper. In view of the foregoing, Applicant respectfully submits that registration of the present mark on the Principal Register is appropriate and is respectfully requested. If any impediment to passing this mark onto publication remains after entry of this Response and consideration of these remarks the Trademark Attorney is invited to initiate a telephone interview with the undersigned attorney.

EVIDENCE
Evidence in the nature of Exhibits to Applicant's argument has been attached.
Original PDF file:
evi_651161166-20191008114437139395_._Exhibit_A.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_651161166-20191008114437139395_._Exhibit_B.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_651161166-20191008114437139395_._Exhibit_C.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_651161166-20191008114437139395_._Exhibit_D.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 A multiple user software chatbot program that allows for real-time communication
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: A multiple user software chatbot program that allows for real-time communication; A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations.Class 009 for A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations.
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Product selection and order fulfillment mechanism;, namely, providing website assistance and product information for the purpose of assisting with the selection of general consumer merchandise; chatbot used to answer consumer questions and provide assistance for online shopping
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: Product selection and order fulfillment mechanism; Product selection and order fulfillment mechanism, namely, providing commercial information and advice for consumers in the nature of website assistance and product information for the purpose of assisting with the selection of general consumer merchandise; , namely, providing website assistance and product information for the purpose of assisting with the selection of general consumer merchandise; chatbot used to answer consumer questions and provide assistance for online shoppingClass 035 for Product selection and order fulfillment mechanism, namely, providing commercial information and advice for consumers in the nature of website assistance and product information for the purpose of assisting with the selection of general consumer merchandise
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Platform as a service (PAAS) featuring a computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping
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.

The applicant's current attorney information: E. Glen Nickle. E. Glen Nickle of OVERSTOCK.COM, INC., is located at

      799 WEST COLISEUM WAY
      MIDVALE, Utah 84047
      US
The docket/reference number is TM-00462.

The phone number is 801-947-3780.

The email address is trademarks@overstock.com

The applicants proposed attorney information: E. Glen Nickle. E. Glen Nickle of OVERSTOCK.COM, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      799 WEST COLISEUM WAY
      MIDVALE, Utah 84047
      United States
The docket/reference number is TM-00462.

The phone number is 801-947-3780.

The email address is trademarks@overstock.com

E. Glen Nickle submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: E. GLEN NICKLE. E. GLEN NICKLE of OVERSTOCK.COM, INC., is located at

      799 WEST COLISEUM WAY
      MIDVALE, Utah 84047
      US
The docket/reference number is TM-00462.

The phone number is 801-947-3780.

The email address is trademarks@overstock.com

The applicants proposed correspondence information: E. Glen Nickle. E. Glen Nickle of OVERSTOCK.COM, INC., is located at

      799 WEST COLISEUM WAY
      MIDVALE, Utah 84047
      United States
The docket/reference number is TM-00462.

The phone number is 801-947-3780.

The email address is trademarks@overstock.com

FEE(S)
Fee(s) in the amount of $375 is being submitted.

SIGNATURE(S)

Signature: /E Glen Nickle/      Date: 10/08/2019
Signatory's Name: E. Glen Nickle
Signatory's Position: General Counsel
Signatory's Phone Number: 8019473780


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: /E Glen Nickle/      Date: 10/08/2019
Signatory's Name: E. Glen Nickle
Signatory's Position: General Counsel
Signatory's Phone Number: 8019473780


Response Signature
Signature: /E Glen Nickle/     Date: 10/08/2019
Signatory's Name: E. Glen Nickle
Signatory's Position: General Counsel

Signatory's Phone Number: 8019473780

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    E. GLEN NICKLE
   OVERSTOCK.COM, INC.
   
   799 WEST COLISEUM WAY
   MIDVALE, Utah 84047
Mailing Address:    E. Glen Nickle
   OVERSTOCK.COM, INC.
   799 WEST COLISEUM WAY
   MIDVALE, Utah 84047
        
RAM Sale Number: 88250356
RAM Accounting Date: 10/08/2019
        
Serial Number: 88250356
Internet Transmission Date: Tue Oct 08 12:31:37 EDT 2019
TEAS Stamp: USPTO/POA-XX.XXX.XXX.X-20191008123137683
246-88250356-610a5dab446f44acb8a7c8834a6
b9ac4289116019a225f6340974d72d94be212d0-
CC-31362191-20191008114437139395