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. 88385241 DALI (Stylized and/or with Design, see http://uspto.report/TM/88385241/mark.png) has been amended as follows:

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

(1) The Examiner has refused registration of the Applicant's marks because of a likelihood of confusion with the marks in U.S. Registration Nos. 4906811, 4115249 and 2357877 under the Trademark Act Section 2(d). (2) Although it is undisputed that Applicant?s marks and the cited marks do contain the identical wording of "DALI", Applicant hereby submits that the overall commercial expression of Applicant?s marks is distinctive with its design elements in the colours of blue and white. Compared with the cited marks, which in general are mere word marks, Applicant?s marks consist of a blue circular design with white diagonal stripes above or appearing to the left of the stylized black wording ?DALI?, so it is logical to conclude that consumers will focus on the design elements at first sight because a coloured graphic at the upper/left part of the marks should be more eye-catching than the black wording at the lower/right part. Likewise, consumers will remember the coloured graphic as a dominant feature of Applicant?s marks. (3) Also, after amending the identification of goods, Applicant's marks no longer cover "Media players; Downloadable computer application software for portable media players; Voice display monitors" under Class 9. With the removal of the said products, the goods of Applicant's marks are no longer identical/similar or related to the goods of the cited marks. (4) After the amendment, the goods of Applicant?s marks are mainly: thermal/infrared-related devices, medical laboratory research instruments, instruments and parts for underwater photography, sensors, distance measuring apparatus, etc. (5) On the other hand, the goods of the cited marks are mainly: acoustic apparatus, loudspeakers, amplifiers, audio earphones and headphones, loudspeaker drive units, etc. (6) Although all of the goods are electronic products, the purposes and functions of the amended goods of Applicant?s marks are greatly different from those of the goods of the cited marks, and the Applicant?s and Registrant?s goods are not related to or complementing each other. As such, the chance of consumers purchasing the goods of Applicant?s marks and the cited marks together or in a set is very little; even more, it is very likely that the types/classes of consumers for the Applicant?s goods and the Registrant?s goods are not the same. Therefore, in terms of the goods, the likelihood of confusion is extremely low. (7) Furthermore, most of the goods of Applicant?s marks are not of low pricing, and usually professionalism and knowledge will be required in making use of and making a purchase decision of these goods (e.g., thermal/infrared- related devices, medical laboratory research instruments, instruments and parts for underwater photography, etc.). Therefore, it is very unlikely that consumers with professional knowledge in these fields would confuse the goods bearing Applicant?s marks with the different goods which bear the cited marks, especially when the Applicant?s goods are not of low pricing and thus time would be required for consumers to study and make their purchase decision. (8) The Internet evidence about ?Toshiba? and the evidence of some third-party registrations as cited by the Examiner show that the same or similar goods as those of both Applicant and Registrant in this case may be marketed and/or may emanate from a single source under a single mark. (9) However, Applicant hereby submits that it is common that general online platforms, especially for a large-scale platform like Amazon, offer various kinds of products. Confusion is not necessarily likely simply because the goods can be marketed in the same media. Furthermore, it is also common that, depending on the scale and development of a company, a mark may be used on various kinds of goods/services, no matter in the same class or not. Confusion is not necessarily likely simply because the goods can be presented under the same mark. (10) Meanwhile, consumers? impression with regard to a particular mark always connects to one or a few kinds of goods/services only, regardless of how broad the usage of such mark. For example, people remember ?Nike? as a famous brand name of sneakers and sportswear, but when the similar or even identical wording is used for fashion clothing, consumers (especially for those who are not familiar to ?Nike? or sportswear) may not identify such wording directly with the brand ?Nike? at first. (11) Therefore, since it is distinct that ?loudspeakers?, ?amplifiers? and ?acoustic apparatus? are Registrant?s main products, and are where the fame of Registrant?s marks lies with, when consumers encounter the use of Applicant?s marks (same wording but with attention-drawing design and graphic elements) on Applicant?s amended goods, which are not related to ?loudspeakers?, ?amplifiers? and ?acoustic apparatus?, consumers are not necessarily confused that the goods all come from the same source because their impression (if any) towards the cited marks only lies with goods like ?loudspeakers?, ?amplifiers? and ?acoustic apparatus?. (12) After deleting some of the goods, the amended identification of goods under Applicant's marks is in electronic fields different from that of the cited marks, and the goods of the Applicant and Registrant are not related anymore. For all the reasons set forth above, it is respectfully submitted that the likelihood of confusion refusal will not arise in approving Applicant?s marks for registration.

EVIDENCE
Evidence in the nature of Response to likelihood of confusion refusal (also posted in the "ARGUMENT(S)" section) has been attached.
Original PDF file:
evi_223197160230-20190909115503918580_._likelihood_of_confusion_refusal_YY-19002_19003-USTM_01022878.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Media players; Downloadable computer application software for mobile phones, portable media players, handheld computers, namely, software for use in database management, use in electronic storage of data; Thermal imaging cameras; Thermal imaging systems, not for medical use; Remote controlled thermal imaging systems, not for medical use; Medical laboratory research instruments for detecting pathogens, DNA analysis, thermal imaging; Infrared cameras; Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; Radar detectors; Radiation detectors; Integrated circuits; Ultrasonic sensors; Optical sensors; Infrared sensors; Camcorders; Digital video recorders; Digital audio tape recorders; Blank record disks; Blank recordable optical disc; Car video recorders; Video monitors; Voice display monitors; Infrared detection apparatus; Distance measuring apparatus; Measuring apparatus, namely, laser distance meters; Infrared detectors
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: Media players; Downloadable computer application software for mobile phones, handheld computers, namely, software for use in database management, use in electronic storage of data; Downloadable computer application software for mobile phones, portable media players, handheld computers, namely, software for use in database management, use in electronic storage of data; Thermal imaging cameras; Thermal imaging systems, not for medical use; Remote controlled thermal imaging systems, not for medical use; Medical laboratory research instruments for detecting pathogens, DNA analysis, thermal imaging; Infrared cameras; Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; Radar detectors; Radiation detectors; Integrated circuits; Ultrasonic sensors; Optical sensors; Infrared sensors; Camcorders; Digital video recorders; Digital audio tape recorders; Blank record disks; Blank recordable optical disc; Car video recorders; Video monitors; Infrared detection apparatus; Voice display monitors; Distance measuring apparatus; Measuring apparatus, namely, laser distance meters; Infrared detectorsClass 009 for Downloadable computer application software for mobile phones, handheld computers, namely, software for use in database management, use in electronic storage of data; Thermal imaging cameras; Thermal imaging systems, not for medical use; Remote controlled thermal imaging systems, not for medical use; Medical laboratory research instruments for detecting pathogens, DNA analysis, thermal imaging; Infrared cameras; Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; Radar detectors; Radiation detectors; Integrated circuits; Ultrasonic sensors; Optical sensors; Infrared sensors; Camcorders; Digital video recorders; Digital audio tape recorders; Blank record disks; Blank recordable optical disc; Car video recorders; Video monitors; Infrared detection apparatus; Distance measuring apparatus; Measuring apparatus, namely, laser distance meters; Infrared detectors
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: Charles Ho. Charles Ho of BARRON & YOUNG INTELLECTUAL PROPERTY LTD., is located at

      P.O. BOX 1484, GENERAL POST OFFICE
      P.O. BOX 1484, GENERAL POST OFFICE
      HONG KONG,
      HK
The docket/reference number is YY-19002-US.

The phone number is +852-23192577.

The fax number is 852-2319-2767.

The email address is charles_ho@barron-young.com

The applicants proposed attorney information: Charles Ho. Charles Ho of BARRON & YOUNG INTELLECTUAL PROPERTY LTD., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 1484, GENERAL POST OFFICE
      P.O. BOX 1484, GENERAL POST OFFICE
      HONG KONG,
      Hong Kong
The docket/reference number is YY-19002-US.

The phone number is +852-23192577.

The fax number is 852-2319-2767.

The email address is charles_ho@barron-young.com

Charles Ho 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: CHARLES HO. CHARLES HO of BARRON & YOUNG INTELLECTUAL PROPERTY LTD., is located at

      P.O. BOX 1484, GENERAL POST OFFICE
      P.O. BOX 1484, GENERAL POST OFFICE
      HONG KONG,
      HK
The docket/reference number is YY-19002-US.

The phone number is +852-23192577.

The fax number is 852-2319-2767.

The email address is charles_ho@barron-young.com; bytrademark@barron-young.com

The applicants proposed correspondence information: Charles Ho. Charles Ho of BARRON & YOUNG INTELLECTUAL PROPERTY LTD., is located at

      P.O. BOX 1484, GENERAL POST OFFICE
      P.O. BOX 1484, GENERAL POST OFFICE
      HONG KONG,
      Hong Kong
The docket/reference number is YY-19002-US.

The phone number is +852-23192577.

The fax number is 852-2319-2767.

The email address is charles_ho@barron-young.com; bytrademark@barron-young.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "DALI" in black appearing below a blue circular design with white diagonal stripes.

SIGNATURE(S)
Response Signature
Signature: /Charles Ho/     Date: 09/09/2019
Signatory's Name: Charles Ho
Signatory's Position: Attorney of Record

Signatory's Phone Number: 852-23192577

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:    CHARLES HO
   BARRON & YOUNG INTELLECTUAL PROPERTY LTD.
   P.O. BOX 1484, GENERAL POST OFFICE
   P.O. BOX 1484, GENERAL POST OFFICE
   HONG KONG,
Mailing Address:    Charles Ho
   BARRON & YOUNG INTELLECTUAL PROPERTY LTD.
   P.O. BOX 1484, GENERAL POST OFFICE
   P.O. BOX 1484, GENERAL POST OFFICE
   HONG KONG,
        
Serial Number: 88385241
Internet Transmission Date: Mon Sep 09 13:28:25 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190909132825
618520-88385241-61082e3d7264688b50db844a
fd443437212a7cc9429dedbc0a18ab6d818f5bb1
8-N/A-N/A-20190909115503918580