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. 88321583 BEKA(Standard Characters, see http://uspto.report/TM/88321583/mark.png) has been amended as follows:

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

In response to Likelihood of Confusion, comparison of Marks: Our reason for requesting a trademark of "Beka" is so we can control product descriptions published by sellers on the Amazon selling platform. As the manufacturer of Beka, Inc.'s creative play product line, we sell some products ourselves and many more through online retailers selling primarily on Amazon.com. Our sales, and a growing portion of retail sales, are largely items sold through the internet. As a selling platform, the internet is a visual space, a space in which a word like "Beka" has no similarilty to the two words "Becca's Bunch" or even just "Becca". Since the likelihood of confusing the visual presentation of "Beka" with "Becca's Bunch", we believe the marks are substantially different. We do not believe any sort of phonetic similarity or "sound" similarity is likely to cause confusion in an online world where consumers are reading product information, as opposed to hearing it as a spoken word. The details of a very short "Beka" versus a longer "Becca's Bunch" further reduce the likelihood of confusion on the part of the public. Comparison of Goods: While both Beka and Becca's Bunch technically fit into the same broad International Class 28 category, details of the two product lines are extremely different, making confusing the two very different product lines extremely unlikely. "Beka" products feature large scale natural wood items the encourage or support creative play for children (hence class 28 "toys" as a relevant category). Specifically, Beka products may be described as children's furniture that supports play. All Beka products are wooden and all are manufacured in the USA. They are primarily sold online. On the other hand, Becca's Bunch products are based on their own British preschool television series, featuring small puppets and related novelty items. The dramatic difference in the two product lines (origin of manufacture, their uses, shapes, sizes and definitely cost) make confusion on the part of a consumer searching for either product line extremely unlikely. Beka products are generally based on traditional creative play items (toys or furniture) often found in a child's room or in a school's kindergarten or early elementary classrooms. Beka products are sold by a very small number of retailers, in recent years almost exclusively online, average prices are $100 and up. Becca's Bunch products whimsical interpretations of their videos and are sold through a wide number of channels, as they are being distributed in the United States by large toy vendors, as well as online from a large number of online sellers; average prices range from $2.99 - $19.99. Substantial differences in the two product lines, as well as the nature of the two companies make any confusion of the companies or their unique goods extremely unlikely. A completely Made in America large scale wooden product line compared to a Dublin based product line featuring videos, games and novelty gift items are very unlikely to be confused. As a result, we believe our request to use "Beka" as a trademark for our own manufactured items should be granted.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Toy boxes; Toy building blocks; Toys, namely, puppets and accessories therefor; Construction toys; Drawing toys; Drawing toys comprised of drawing boards, magnetic styluses, and metal particles; Stacking toys
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/1973 and first used in commerce at least as early as 06/01/1973 , and is now in use in such commerce.

Proposed: Class 028 for Toy boxes; Toy building blocks; Toys, namely, puppets and accessories therefor; Construction toys; Drawing toys; Drawing toys comprised of drawing boards, magnetic styluses, and metal particles; Stacking toys
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/1973 and first used in commerce at least as early as 06/01/1973 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 028 . The specimen(s) submitted consists of Wood products produced by Beka, Inc. that include "Beka" branded/burned into a wood piece that is part of a product, plus graphics glued onto product shipping cartons that illustrate how the "Beka" brand is used in commerce. The brand "Beka" is currently in use in commerce to identify Made in the USA large scale wooden furniture designed for creative play. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

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: /James Kreisman/Beka, Inc./      Date: 10/03/2019
Signatory's Name: James Kreisman
Signatory's Position: President
Signatory's Phone Number: 6512227005


Response Signature
Signature: /James Kreisman/Beka, Inc./     Date: 10/03/2019
Signatory's Name: James Kreisman/
Signatory's Position: Owner and President

Signatory's Phone Number: 6512227005

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

        
Serial Number: 88321583
Internet Transmission Date: Thu Oct 03 16:07:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2019100316075877404
5-88321583-610cf1131a39bf1ac9a0fb4a59efa
9278558e3ccf5439de35f752ba2486ae845da-N/
A-N/A-20191003151028116098