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)

---

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. 88271379 CLARO(Standard Characters, see http://uspto.report/TM/88271379/mark.png) has been amended as follows:

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

This is in response to the Office Action dated March 15, 2019.

 

The Trademark Examining Attorney has made Section 2(d) refusals.  Initially, it is noted that Application Serial No. 87/344,598 has been abandoned, thus mooting this provisional refusal.

 

The refusals based on Registration Nos. 5,221,043 (CLAROR) and 3,003,490 (ACLARO) are respectfully traversed.  Applicant’s mark CLARO has a different pronunciation, commercial impression and meaning than the marks in the cited registrations.  Also, Applicant’s mark is used for a light emitting device (in Class 10) whereas the marks in the cited registration are used for skin care preparations in Class 5.  Notwithstanding the evidence the Trademark Examining Attorney has provided, the differences between the Applicant’s mark and the marks in the cited registrations will be enough to avoid any likelihood of confusion.  The evidence the Trademark Examining Attorney presented shows use of EXACT marks on devices, and preparations.  This is not the situation in this case.

 

As for Registration No. 3,846,433, upon information and belief, Applicant believes that this mark has been abandoned.  Applicant has filed a Petition to Cancel this registration, Cancellation Proceeding No. 92072256 .  Applicant respectfully requests SUSPENSION of this application pending the resolution of the Cancellation Petition.

 

Based on the above, the only issue remaining in this application is the Section 2(d) refusal based on Registration No. 3,846,433.  Applicant respectfully requests withdrawal of the other Section 2(d) refusals, and SUSPENSION of this application pending the disposition of Cancellation Proceeding No. 92072256.

The applicant's current attorney information: David V. Radack. David V. Radack of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      600 GRANT STREET, 44TH FLOOR
      PITTSBURGH, Pennsylvania 15219
      US
The docket/reference number is 305276-00115.

The phone number is 412-566-6777.

The fax number is 412-566-6099.

The email address is dradack@eckertseamans.com

The applicants proposed attorney information: David V. Radack. David V. Radack of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      600 GRANT STREET, 44TH FLOOR
      PITTSBURGH, Pennsylvania 15219
      United States
The docket/reference number is 305276-00115.

The phone number is 412-566-6777.

The fax number is 412-566-6099.

The email address is dradack@eckertseamans.com

David V. Radack 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: DAVID V. RADACK. DAVID V. RADACK of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      600 GRANT STREET, 44TH FLOOR
      PITTSBURGH, Pennsylvania 15219
      US
The docket/reference number is 305276-00115.

The phone number is 412-566-6777.

The fax number is 412-566-6099.

The email address is dradack@eckertseamans.com; ipmail@eckertseamans.com

The applicants proposed correspondence information: David V. Radack. David V. Radack of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      600 GRANT STREET, 44TH FLOOR
      PITTSBURGH, Pennsylvania 15219
      United States
The docket/reference number is 305276-00115.

The phone number is 412-566-6777.

The fax number is 412-566-6099.

The email address is dradack@eckertseamans.com; ipmail@eckertseamans.com

SIGNATURE(S)
Response Signature
Signature: /David V. Radack/     Date: 09/12/2019
Signatory's Name: David V. Radack
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 412-566-6777

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:    DAVID V. RADACK
   ECKERT SEAMANS CHERIN & MELLOTT, LLC
   
   600 GRANT STREET, 44TH FLOOR
   PITTSBURGH, Pennsylvania 15219
Mailing Address:    David V. Radack
   ECKERT SEAMANS CHERIN & MELLOTT, LLC
   600 GRANT STREET, 44TH FLOOR
   PITTSBURGH, Pennsylvania 15219
        
Serial Number: 88271379
Internet Transmission Date: Thu Sep 12 15:00:38 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201909121500384
12868-88271379-6104f54a43351ad2d4bf623e2
30a29d697c7784483902bfb74c5ed731d7744e91
5-N/A-N/A-20190912145902414374