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. 88555586 PULSAR(Standard Characters, see http://uspto.report/TM/88555586/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

RESPONSE TO OFFICE ACTION

 

 

In re:  Trademark Application of:

Mattel, Inc.

333 Continental Boulevard

El Segundo, CA  90245

Serial No.:  88/555586

Filing Date:  July 31, 2019

Class:  28

Mark:  PULSAR                                 

 

Trademark Law Office:  115

Examining Attorney:  Bridgett G. Smith

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

 

Madam:

 

This is in response to the Office Action mailed September 26, 2019.

 

RESPONSE

 

The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the Applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration Number 4648033 for PULSAR as to be likely to cause confusion, to cause mistake, or to deceive.  Applicant respectfully disagrees.

 

Applicant has amended the identification of goods and by doing so, has properly distinguished them from the goods associated with the cited registration.   Accordingly, Applicant submits that the respective trademarks will be registered in connection with sufficiently unrelated goods such that confusion will be avoided.

 

In addition, the Examining Attorney provided information regarding pending U.S. application for the mark PULZAR, Serial No. 88/195881, as there may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) should the prior-filed application mature into registration.  A search of the Trademark Status and Document Retrieval (TSDR) reveals that application was abandoned on August 27, 2019.

 

In view of the arguments set forth above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and waive any potential objections based on the prior-filed application and to pass this application to publication.

.

Respectfully submitted,

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for TOYS, GAMES AND PLAYTHINGS
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: TOYS, GAMES AND PLAYTHINGS; TOYS, GAMES AND PLAYTHINGS, NAMELY, TOY FIGURES AND ACCESSORIES THEREFOR, TOY ACTION FIGURES AND ACCESSORIES THEREFOR, TOY ACTION FIGURE PLAYSETS AND ACCESSORIES THEREFOR, TOY VEHICLES AND ACCESSORIES THEREFORClass 028 for TOYS, GAMES AND PLAYTHINGS, NAMELY, TOY FIGURES AND ACCESSORIES THEREFOR, TOY ACTION FIGURES AND ACCESSORIES THEREFOR, TOY ACTION FIGURE PLAYSETS AND ACCESSORIES THEREFOR, TOY VEHICLES AND ACCESSORIES THEREFOR
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: MICHAEL MOORE. MICHAEL MOORE of MATTEL, INC., is located at

      TWR 15-1
      333 CONTINENTAL BOULEVARD
      EL SEGUNDO, California 90245
      US

The phone number is 310-252-2000.

The email address is USPTO@mattel.com

The applicants proposed attorney information: MICHAEL MOORE. Other appointed attorneys are TARA HART-NOVA, RIE MIYAKE. MICHAEL MOORE of MATTEL, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      TWR 15-1
      333 CONTINENTAL BOULEVARD
      EL SEGUNDO, California 90245
      United States

The phone number is 310-252-2000.

The email address is USPTO@mattel.com

MICHAEL MOORE 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: MICHAEL MOORE. MICHAEL MOORE of MATTEL, INC., is located at

      TWR 15-1
      333 CONTINENTAL BOULEVARD
      EL SEGUNDO, California 90245
      US

The phone number is 310-252-2000.

The email address is USPTO@mattel.com

The applicants proposed correspondence information: MICHAEL MOORE. MICHAEL MOORE of MATTEL, INC., is located at

      TWR 15-1
      333 CONTINENTAL BOULEVARD
      EL SEGUNDO, California 90245
      United States

The phone number is 310-252-2000.

The email address is USPTO@mattel.com

SIGNATURE(S)
Response Signature
Signature: /mcm/     Date: 01/28/2020
Signatory's Name: MICHAEL MOORE
Signatory's Position: ATTORNEY OF RECORD, CA BAR MEMBER

Signatory's Phone Number: 310-252-2000

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:    MICHAEL MOORE
   MATTEL, INC.
   TWR 15-1
   333 CONTINENTAL BOULEVARD
   EL SEGUNDO, California 90245
Mailing Address:    MICHAEL MOORE
   MATTEL, INC.
   TWR 15-1
   333 CONTINENTAL BOULEVARD
   EL SEGUNDO, California 90245
        
Serial Number: 88555586
Internet Transmission Date: Wed Jan 29 10:34:01 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200129103401
300624-88555586-700e4dc1383ead92acd6db28
d624844f1093275facea95f169dd96b15efac5ca
9-N/A-N/A-20200128174135700487