| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88380305 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88380305/mark.png |
| LITERAL ELEMENT | READYSET |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 88333138 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
Examination of Applicant's proposed mark has been suspended based on an earlier-filed trademark application for READYSET HEROES used in connection with computer games software. Applicant respectfully submits that the mark of the cited application is not confusingly similar to the proposed mark for at least the following reasons. While READYSET is common to both marks, Applicant submits that the addition of HEROES changes the sound, and more importantly, the commercial impression of the mark. Applicant submits that this is not an insubstantial difference. In the proposed mark, READYSET is the only word. As such, it conjures an image of the instruction issued before the commencement of some activity, such as a race. However, with the cited application "READYSET HEROES", the word READYSET is a modifier for HEROES. As such, this term conjures an image of a particular type of person whom the listener associates with a hero. For example, for many consumers, the cited mark may conjure an image of fictional superheroes, such as shown on TV, in the movies, or in video games. Moreover, Applicant's mark includes a distinctive design which further differentiates the proposed mark from the cited mark. With respect to goods, Applicant notes that there is a substantial difference between business-to-business software used for retail research, simulation, and concept design demonstration, and the computer game software listed in READYSET HEROES. Applicant submits that these different types of software are likely distributed via different trade channels. Specialized business-to-business software used for retail research, simulation, and concept design demonstration is likely to be distributed via sales reps, consultants, and IT experts in the retail industry. Video games, on the other hand, are more likely to be distributed in retail establishments and on video game websites. Therefore, given the differences, as set forth above, in the marks and in the respective goods associated with those marks, Applicant submits that there would be no likelihood of confusion between the word and design mark, as proposed, and the cited application for READYSET HEROES. In light of the foregoing, Applicant respectfully submits that the above-referenced application is in condition for publication and respectfully requests the same. If additional explanation or amendment is required, the Examining Attorney is respectfully requested to telephone the undersigned. |
|
| ATTORNEY SECTION (current) | |
| NAME | Gordon M.Wright |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | REINHART BOERNER VAN DEUREN P.C. |
| STREET | 2215 PERRYGREEN WAY |
| CITY | ROCKFORD |
| STATE | Illinois |
| COUNTRY | US |
| PHONE | 815-633-5300 |
| FAX | 815-654-5770 |
| rockmail@reinhartlaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 511868 |
| OTHER APPOINTED ATTORNEY | Gordon M.Wright |
| ATTORNEY SECTION (proposed) | |
| NAME | Gordon M.Wright |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | REINHART BOERNER VAN DEUREN P.C. |
| STREET | 2215 PERRYGREEN WAY |
| CITY | ROCKFORD |
| STATE | Illinois |
| POSTAL CODE | 61107 |
| COUNTRY | United States |
| PHONE | 815-633-5300 |
| FAX | 815-654-5770 |
| rockmail@reinhartlaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 511868 |
| OTHER APPOINTED ATTORNEY | Jeffery J. Makeever; Andrew J. Heinisch; Jeremy R. Bridge; Michael J. Baima; Timothy P. Naill; John Paul Kale; Daniel E. Kattman, Heidi R. Thole |
| CORRESPONDENCE SECTION (current) | |
| NAME | GORDON M.WRIGHT |
| FIRM NAME | REINHART BOERNER VAN DEUREN P.C. |
| STREET | 2215 PERRYGREEN WAY |
| CITY | ROCKFORD |
| STATE | Illinois |
| COUNTRY | US |
| PHONE | 815-633-5300 |
| FAX | 815-654-5770 |
| rockmail@reinhartlaw.com; alocke@reinhartlaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 511868 |
| OTHER APPOINTED ATTORNEY | Gordon M.Wright |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Gordon M.Wright |
| FIRM NAME | REINHART BOERNER VAN DEUREN P.C. |
| STREET | 2215 PERRYGREEN WAY |
| CITY | ROCKFORD |
| STATE | Illinois |
| POSTAL CODE | 61107 |
| COUNTRY | United States |
| PHONE | 815-633-5300 |
| FAX | 815-654-5770 |
| rockmail@reinhartlaw.com; alocke@reinhartlaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 511868 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Gordon M. Wright/ |
| SIGNATORY'S NAME | Gordon M. Wright |
| SIGNATORY'S POSITION | Attorney of Record/IL Bar Member |
| SIGNATORY'S PHONE NUMBER | 815-633-5300 |
| DATE SIGNED | 12/23/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 23 16:13:46 EST 2019 |
| TEAS STAMP | USPTO/RSI-XXX.XXX.XXX.XX- 20191223161346795886-8838 0305-70089916fdc772acc7a5 67e86193e64a88151843c27dd 3f5f90237ab9476f573-N/A-N /A-20191223155752937903 |
| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Examination of Applicant's proposed mark has been suspended based on an earlier-filed trademark application for READYSET HEROES used in connection with computer games software. Applicant respectfully submits that the mark of the cited application is not confusingly similar to the proposed mark for at least the following reasons.
While READYSET is common to both marks, Applicant submits that the addition of HEROES changes the sound, and more importantly, the commercial impression of the mark. Applicant submits that this is not an insubstantial difference. In the proposed mark, READYSET is the only word. As such, it conjures an image of the instruction issued before the commencement of some activity, such as a race.
However, with the cited application "READYSET HEROES", the word READYSET is a modifier for HEROES. As such, this term conjures an image of a particular type of person whom the listener associates with a hero. For example, for many consumers, the cited mark may conjure an image of fictional superheroes, such as shown on TV, in the movies, or in video games. Moreover, Applicant's mark includes a distinctive design which further differentiates the proposed mark from the cited mark.
With respect to goods, Applicant notes that there is a substantial difference between business-to-business software used for retail research, simulation, and concept design demonstration, and the computer game software listed in READYSET HEROES. Applicant submits that these different types of software are likely distributed via different trade channels. Specialized business-to-business software used for retail research, simulation, and concept design demonstration is likely to be distributed via sales reps, consultants, and IT experts in the retail industry. Video games, on the other hand, are more likely to be distributed in retail establishments and on video game websites.
Therefore, given the differences, as set forth above, in the marks and in the respective goods associated with those marks, Applicant submits that there would be no likelihood of confusion between the word and design mark, as proposed, and the cited application for READYSET HEROES.
In light of the foregoing, Applicant respectfully submits that the above-referenced application is in condition for publication and respectfully requests the same. If additional explanation or amendment is required, the Examining Attorney is respectfully requested to telephone the undersigned.