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. 88461815 ROCKETS(Standard Characters, see http://uspto.report/TM/88461815/mark.png) has been amended as follows:

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

The Examining Attorney has rejected the applied-for mark, Application No. 88461815 indicating that a likelihood of confusion exists between the applicant?s mark and US Registrations 5116721, 4155015, 4558159 and 3421198. Registrants? marks are for the following goods: 1) ROCKET (Reg. No. 4558159) for ?Radio devices, namely, devices for outdoor wireless radio transmission as part of an outdoor wireless network; outdoor radio receivers and transmitters used as part of an outdoor wireless network; outdoor wireless transceiver radio used as part of an outdoor wireless network.? 2) RAZZI (Reg. No. 4155015) for ?Eyeglass frames; Eyeglasses; Sunglasses.? 3) RUN ROCKETS (Reg. No. 5116721, with ?RUN? disclaimed) for ?Eye glasses featuring computers; wearable computers in the nature of activity trackers; wearable computers; electric or electronic sensors for sensing motions in sports exercise; electric or electronic sensors for sensing motions of a person; electric sensors and detectors for sensing and detecting motion in sports and of a person; computer game software; computer application software for smart eye glasses, namely, software for analyzing motions and activities in sports exercise; computer application software for tablets, mobiles and PCs namely, software for analyzing motions and activities in sports exercise; measuring apparatus, namely, for measuring heartbeat, pulse, and length during a person's motion and activities; size and fit measuring apparatus, namely, for selection of suitable shoes; electronic sensors for sensing physical exercise data during exercise, namely, speed, distance, stride rate, number of steps, exact motion of feet, legs, arms, hands or sporting goods like ski, shoes, poles; electronic portable devices, namely, data recorders for storing, transferring and synchronizing physical exercise data.? 4) ROKIT (Reg. No. 3421198) for ?loudspeakers.? Applicant respectfully disagrees that there is a likelihood of confusion between the cited marks and the applied-for mark under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d). In In Re E.I. du Pont de Nemours & Co., 476 F.2D 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the Court held that the following marketplace factors must be considered in determining whether confusion is likely to occur: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; 2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which buyers to whom sales are made, i.e., ?impulsive? vs. careful, sophisticated purchasing; 5. The fame of the prior mark; 6. The number and nature of similar marks in use on similar goods; 7. The nature and extent of any actual confusion; 8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; 9. The variety of goods on which a mark is or is not used; 10. The market interface between the applicant and the owner of a prior mark; 11. The extent to which the applicant has a right to exclude others from use of its mark on its goods; 12. The extent of potential confusion; 13. Any other established fact probative of the effect of use. As discussed below, an analysis of multiple factors set forth in DuPont establishes that no confusion is likely to occur between the Applicant?s Mark and the Cited Marks. Applicant?s Mark and Registration Nos. 4558159, 5116721, and 3421198: Applicant?s Mark and the Registered marks are variations on the word ROCKET thus making them dissimilar in appearance and phonetics. The examiner argues that this variation does not obviate confusion. However, since the registered marks exist on the US registrar with such variations, and without confusion, it stands to reason that the applied-for mark should be permitted to exist on the US register as well. In fact, it is these variations within the names of the registered marks and the applied-for mark that create a distinction removing any likelihood of confusion. Evidence of Rockets marks coexisting on the US register for similar goods are attached hereto as Exhibit A. Applicant?s goods and Registration Nos. 4558159,341198 and 5116721: The examining attorney cites to the fact that the applicant?s goods contain the broad wording ?electronic audio speakers and radios, ? and that such wording encompasses all the goods of the type described including ?loudspeakers? under registration no. 3421198, and ?radio devices, namely, devices for outdoor wireless radio transmission as part of an outdoor wireless network; outdoor radio receivers and transmitters used as part of an outdoor wireless network; outdoor wireless transceiver radio used as part of an outdoor wireless network;? under registration no. 4558159. However, the examing attorney fails to take into account that the applicant has specifically referenced in its description that the items it is marketing are related to the field of basketball. By making this distinction, the applicant clearly indicates the type of market and consumer it is targeting and thus differentiates itself from the cited registrations. It is therefore presumptive of the examining attorney to think that because goods are worded in a broad manner that they are all-encompassing. RUN ROCKETS, filed by HS Innovation GmbH, promotes wearable tracking devices from eyewear to electronic sensors for monitoring physical activity and exercise. Use of the cited registrations 4558159,341198 are attached as Exhibit B, along with an article referencing the RUN ROCKETS product; registration no. 5116721. Applicant is the owner of the Houston Rockets basketball team an American professional basketball team that competes in the National Basketball Association (?NBA?) as a member team of the league's Western Conference Southwest Division. The applicant uses its mark in connection with the promotion of its basketball team. Applicant?s products are purchased by basketball fans at team stores, sporting goods stores, the NBA Store, via mail order catalog, and online at www.store.nba.com/houston-rockets and www.rocketsshop.com. Additionally, products bearing Applicant?s Mark are marketed and sold in basketball venues and arenas where basketball games are played. It is therefore unlikely that there would be a likelihood of confusion between Applicant?s goods and the items marketed under the cited registrations. Applicant?s products can also be purchased by NBA fans at sporting goods stores and the sporting goods sections of department stores. In such stores, Applicant?s products are generally sold alongside other NBA licensed products bearing the marks and logos of the NBA and other NBA member teams. Further, all merchandise depicting the ROCKETS mark bears an NBA Official Licensed Product hologram hangtag or sticker. Such labeling shows that the merchandise is officially licensed by the league. SOPHISTICATED CONSUMERS Since the founding of the NBA in 1946, millions of Americans have watched basketball games each year via NBA broadcasts throughout the United States on major television networks such as NBC and ABC, cable television networks such as TNT, TBS, and TSN, the NBA-owned cable television channel NBA.TV, satellite television on DirecTV, and national radio broadcasts on ESPN Radio, as well as a host of local and regional broadcasters. Highlights of NBA games are shown on a daily basis during the season throughout the country on local news broadcasts and on the leagues? website. Based on the fame and interest in the NBA, outside the US, games also are broadcast in more than 200 countries and territories and in 42 different languages. As discussed above, Applicant?s products are purchased by basketball fans at team stores, sporting goods stores, the NBA Store in New York City, and online. Applicant?s products are purchased primarily by or for fans of professional basketball. Sports fans tend to be very discerning and specific in their loyalties to particular sports leagues and/or individual teams and are very familiar with NBA trademarks, insignia and logos. The purchasers of these products are well-aware of the Houston Rockets, the NBA, and their affiliated trademarks. Courts have recognized the enormous popularity of professional sports and have determined that the public association of teams with their trademarks and service marks occurs almost instantly upon the adoption of the marks. For example, in Johnny Blastoff, Inc. v. Los Angeles Rams Football Company, 48 U.S.P.Q.2d 1385, 1396 (W.D. Wis. 1998), aff?d, 51 U.S.P.Q.2d 1920 (7th Cir. 1999), reh?g en banc, denied, 1999 U.S. App. LEXIS 20972 (7th Cir.), cert. denied, 120 S. Ct. 1241 (2000), the Court recognized the significant local and national media attention devoted to the activities of NFL teams, as well as the interest and enthusiasm of NFL fans, and found that through such coverage and fan interest, the trademark ST. LOUIS RAMS achieved secondary meaning virtually upon its adoption. The applicant?s mark is merely an extension of the Applicant?s basketball team. Consumers who are purchasing items owned by the Applicant do so to show support for the sport of basketball. The applicant submits that the differences between the marks, channels of trade, and potential customers precludes any likelihood of confusion between the Applicant?s Mark and the Cited Mark. Accordingly, Applicant respectfully requests the Examining Attorney withdraw the refusal and allow the Applicant?s Mark to proceed to publication. Applicant?s Mark and Registration No. 4155015: The Examining Attorney has refused registration of the Applicant?s Mark based on an alleged likelihood of confusion with U.S. Registration 4155015; RAZZI. Applicant amends the goods identified in class 09 so that the identification is sufficiently far removed from the goods covered in US Trademark Registration 4155015. The items ?sunglasses; eyeglass frames; eyewear accessories, namely, eyewear straps and chains which restrain eyewear from movement on wearer; eyeglass and sunglass cases? have been eliminated

EVIDENCE
Evidence in the nature of Exhibit A: Registered Rockets marks on the USPTO register Exhibit B: evidence of use of the cited registrations has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_746522731-20200227204254140665_._ROCKETS_Reg_in_class_09.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_746522731-20200227204254140665_._Rocket_data_sheet_for_Ubitquit.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_746522731-20200227204254140665_._ROKIT_Speakers_as_sold_by_retailers.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Audio recordings and video recordings featuring entertainment and information in the field of basketball; computer accessories, namely, blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; stands adapted for computers, laptops and tablet computers; hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players; computer keyboards, computer joystick peripherals, mouse pads, computer mice, computer stylus, capacitive styluses for touch screen devices, compact disc cases, computer carrying cases, protective sleeves for laptop and tablet computers, wrist rests for use with computers, all related to basketball; battery chargers for mobile phones; USB charging ports; computer programs for viewing information, statistics or trivia about basketball; computer software, namely, screen savers featuring basketball themes; computer software to access and view computer wallpaper; computer skins, namely, fitted plastic film known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants, and electronic tablets; computer game software; video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely, headsets, mobile phone straps, ; covers and stands for portable music players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear accessories, namely, eyewear straps and chains which restrain eyewear from movement on wearer; eyeglass and sunglass cases; magnets; disposable cameras; credit cards, debit cards, cash cards, key cards and pre-paid telephone calling cards magnetically encoded; downloadable video recordings, video stream recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet; downloadable electronic publications in the nature of game schedules all in the field of basketball provided over the Internet; mouth guards for sports
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: Audio recordings and video recordings featuring entertainment and information in the field of basketball; computer accessories, namely, blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; computer accessories, namely blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; stands adapted for computers, laptops and tablet computers; hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players; computer keyboards, computer joystick peripherals, mouse pads, computer mice, computer stylus, capacitive styluses for touch screen devices, compact disc cases, computer carrying cases, protective sleeves for laptop and tablet computers, wrist rests for use with computers, all related to basketball; battery chargers for mobile phones; USB charging ports; computer programs for viewing information, statistics or trivia about basketball; downloadable computer programs for viewing information, statistics or trivia about basketball; computer software, namely, screen savers featuring basketball themes; downloadable computer software, namely screen savers featuring basketball themes; computer software to access and view computer wallpaper; downloadable computer software to access and view computer wallpaper; computer skins, namely, fitted plastic film known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants, and electronic tablets; computer game software; downloadable computer game software; video game software, video game cartridges; downloadable video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely, headsets, mobile phone straps,; cell phone accessories, namely headsets, mobile phone straps; covers and stands for portable music players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; magnets; eyeglass frames; disposable cameras; eyewear accessories, namely, eyewear straps and chains which restrain eyewear from movement on wearer; credit cards, debit cards, cash cards, key cards and pre-paid telephone calling cards magnetically encoded; eyeglass and sunglass cases; downloadable video recordings, video stream recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet; downloadable electronic publications in the nature of game schedules all in the field of basketball provided over the Internet; mouth guards for sportsClass 009 for Audio recordings and video recordings featuring entertainment and information in the field of basketball; computer accessories, namely blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; stands adapted for computers, laptops and tablet computers; hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players; computer keyboards, computer joystick peripherals, mouse pads, computer mice, computer stylus, capacitive styluses for touch screen devices, compact disc cases, computer carrying cases, protective sleeves for laptop and tablet computers, wrist rests for use with computers, all related to basketball; battery chargers for mobile phones; USB charging ports; downloadable computer programs for viewing information, statistics or trivia about basketball; downloadable computer software, namely screen savers featuring basketball themes; downloadable computer software to access and view computer wallpaper; computer skins, namely, fitted plastic film known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants, and electronic tablets; downloadable computer game software; downloadable video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely headsets, mobile phone straps; covers and stands for portable music players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; magnets; disposable cameras; credit cards, debit cards, cash cards, key cards and pre-paid telephone calling cards magnetically encoded; downloadable video recordings, video stream recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet; downloadable electronic publications in the nature of game schedules all in the field of basketball provided over the Internet; mouth guards for sports
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 owner's/holder's current attorney information: Anil V. George. Anil V. George of NBA PROPERTIES, INC., is located at

      OLYMPIC TOWER 645 FIFTH AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 5336-US-NF.
      The phone number is 212-407-8330.
      The fax number is 646-264-4145.
      The email address is ipgroup@nba.com

The owner's/holder's proposed attorney information: Anil V. George. Anil V. George of NBA PROPERTIES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      OLYMPIC TOWER 645 FIFTH AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 5336-US-NF.
      The phone number is 212-407-8330.
      The fax number is 646-264-4145.
      The email address is rocketsip@nba.com

Anil V. George 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.Correspondence Information (current):
      ANIL V. GEORGE
      PRIMARY EMAIL FOR CORRESPONDENCE: ipgroup@nba.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipgroup@nba.com; avgeorge@nba.com; pmorales@nba.com

The docket/reference number is 5336-US-NF.
Correspondence Information (proposed):
      Anil V. George
      PRIMARY EMAIL FOR CORRESPONDENCE: rocketsip@nba.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipgroup@nba.com; avgeorge@nba.com; pmorales@nba.com

The docket/reference number is 5336-US-NF.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Anil V. George/     Date: 02/27/2020
Signatory's Name: Anil V. George
Signatory's Position: Attorney of Record, NY Bar member

Signatory's Phone Number: 212-4078330

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:    ANIL V. GEORGE
   NBA PROPERTIES, INC.
   
   OLYMPIC TOWER 645 FIFTH AVENUE
   NEW YORK, New York 10022
Mailing Address:    Anil V. George
   NBA PROPERTIES, INC.
   OLYMPIC TOWER 645 FIFTH AVENUE
   NEW YORK, New York 10022
        
Serial Number: 88461815
Internet Transmission Date: Thu Feb 27 20:47:21 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200227204721156
722-88461815-710e61d79b2756f8176b5d7f1f3
25fc323e2c6136455a8246eeb1aa33ca0e8e4-N/
A-N/A-20200227204254140665