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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88424723 |
LAW OFFICE ASSIGNED |
LAW OFFICE 103 |
MARK SECTION |
MARK |
http://uspto.report/TM/88424723/mark.png |
LITERAL ELEMENT |
AFTERSHOCK |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
In the Office Action No. 1, the Examining Attorney has asserted a likelihood of confusion with the mark AFTERSHOCK in US Registration No. 4,540,147
with respect to "computer firmware." The Applicant respectfully disagrees. Any comparison of the parties' commercial activities should be performed in the context of their application(s) and
registration(s). Considering the entire context of the parties' respective application and registration makes it clear that the Applicant's "computer firmware and operating systems" are not
confusingly similar to the Registrant's narrowly defined "firmware for games of chance." As to the identification of goods requirement, the Applicant believes that "computer firmware" is a common
commercial and generic name for these goods, the purpose or function of which is readily understood. "Computer firmware," by its very definition, is a computer program that is contained permanently
in a hardware device and enables that device to function. The Applicant submits that this application is in proper condition for publication and respectfully requests that the application be
forwarded. |
ATTORNEY SECTION (current) |
NAME |
Denis V. Shamo |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
BAKER & MCKENZIE LLP |
STREET |
1900 NORTH PEARL STREET; SUITE 1500 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-978-3000 |
FAX |
214-978-3099 |
EMAIL |
dallastrademarks@bakermckenzie.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
50602888 |
ATTORNEY SECTION (proposed) |
NAME |
Denis V. Shamo |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Baker & McKenzie LLP |
STREET |
1900 North Pearl Street; Suite 1500 |
CITY |
Dallas |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-978-3000 |
FAX |
214-978-3099 |
EMAIL |
dallastrademarks@bakermckenzie.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
50602888 |
OTHER APPOINTED ATTORNEY |
Dyan M. House |
CORRESPONDENCE SECTION (current) |
NAME |
DENIS V. SHAMO |
FIRM NAME |
BAKER & MCKENZIE LLP |
STREET |
1900 NORTH PEARL STREET; SUITE 1500 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-978-3000 |
FAX |
214-978-3099 |
EMAIL |
dallastrademarks@bakermckenzie.com; GIPSCOfficeSupport@bakermckenzie.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
50602888 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Denis V. Shamo |
FIRM NAME |
Baker & McKenzie LLP |
STREET |
1900 North Pearl Street; Suite 1500 |
CITY |
Dallas |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-978-3000 |
FAX |
214-978-3099 |
EMAIL |
dallastrademarks@bakermckenzie.com; GIPSCOfficeSupport@bakermckenzie.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
50602888 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Denis V. Shamo/ |
SIGNATORY'S NAME |
Denis V. Shamo |
SIGNATORY'S POSITION |
Attorney of Record, Michigan Bar member |
DATE SIGNED |
01/27/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Jan 27 17:57:23 EST 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XX-
20200127175723221331-8842
4723-700a22dc0497496be369
4ecdfa9aa4888f7fc2d344348
b6105ef871ccd64188424e-N/
A-N/A-2020012717363686501
5 |
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.
88424723 AFTERSHOCK(Standard Characters, see http://uspto.report/TM/88424723/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In the Office Action No. 1, the Examining Attorney has asserted a likelihood of confusion with the mark AFTERSHOCK in US Registration No. 4,540,147 with respect to "computer firmware." The Applicant
respectfully disagrees. Any comparison of the parties' commercial activities should be performed in the context of their application(s) and registration(s). Considering the entire context of the
parties' respective application and registration makes it clear that the Applicant's "computer firmware and operating systems" are not confusingly similar to the Registrant's narrowly defined
"firmware for games of chance." As to the identification of goods requirement, the Applicant believes that "computer firmware" is a common commercial and generic name for these goods, the purpose or
function of which is readily understood. "Computer firmware," by its very definition, is a computer program that is contained permanently in a hardware device and enables that device to function. The
Applicant submits that this application is in proper condition for publication and respectfully requests that the application be forwarded.
The applicant's current attorney information: Denis V. Shamo. Denis V. Shamo of BAKER & MCKENZIE LLP, is located at
1900 NORTH PEARL STREET; SUITE 1500
DALLAS, Texas 75201
US
The docket/reference number is 50602888.
The phone number is 214-978-3000.
The fax number is 214-978-3099.
The email address is dallastrademarks@bakermckenzie.com
The applicants proposed attorney information: Denis V. Shamo. Other appointed attorneys are Dyan M. House. Denis V. Shamo of Baker & McKenzie LLP, is a member of the XX bar, admitted to the
bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
1900 North Pearl Street; Suite 1500
Dallas, Texas 75201
United States
The docket/reference number is 50602888.
The phone number is 214-978-3000.
The fax number is 214-978-3099.
The email address is dallastrademarks@bakermckenzie.com
Denis V. Shamo 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: DENIS V. SHAMO. DENIS V. SHAMO of BAKER & MCKENZIE LLP, is located at
1900 NORTH PEARL STREET; SUITE 1500
DALLAS, Texas 75201
US
The docket/reference number is 50602888.
The phone number is 214-978-3000.
The fax number is 214-978-3099.
The email address is dallastrademarks@bakermckenzie.com; GIPSCOfficeSupport@bakermckenzie.com
The applicants proposed correspondence information: Denis V. Shamo. Denis V. Shamo of Baker & McKenzie LLP, is located at
1900 North Pearl Street; Suite 1500
Dallas, Texas 75201
United States
The docket/reference number is 50602888.
The phone number is 214-978-3000.
The fax number is 214-978-3099.
The email address is dallastrademarks@bakermckenzie.com; GIPSCOfficeSupport@bakermckenzie.com
SIGNATURE(S)
Response Signature
Signature: /Denis V. Shamo/ Date: 01/27/2020
Signatory's Name: Denis V. Shamo
Signatory's Position: Attorney of Record, Michigan Bar member
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: DENIS V. SHAMO
BAKER & MCKENZIE LLP
1900 NORTH PEARL STREET; SUITE 1500
DALLAS, Texas 75201
Mailing Address: Denis V. Shamo
Baker & McKenzie LLP
1900 North Pearl Street; Suite 1500
Dallas, Texas 75201
Serial Number: 88424723
Internet Transmission Date: Mon Jan 27 17:57:23 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202001271757232
21331-88424723-700a22dc0497496be3694ecdf
a9aa4888f7fc2d344348b6105ef871ccd6418842
4e-N/A-N/A-20200127173636865015