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. 88588513 PLAYA(Standard Characters, see http://uspto.report/TM/88588513/mark.png) has been amended as follows:

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

On August 22, 2019, Applicant filed to register the subject PLAYA mark for the following goods, as amended herein:

Battery chargers; wireless chargers; battery charge devices; charging appliances for rechargeable equipment; USB charging ports; electric charging cables; wireless charging pads for mobile electronic devices; battery packs; rechargeable batteries; mobile phone cases featuring rechargeable batteries; charging docks and charging stations for charging mobile electronic devices and consumer electronics; car chargers, charging stands and home chargers for charging mobile electronic devices and consumer electronics; computer cables; audio cables; video cables; USB cables; protective cases and covers for mobile electronic devices; protective cases and sleeves for laptop computers and tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; screen protectors comprised of tempered glass for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; stands and mounts for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; headphones; earphones; headphone audio splitters; headphone splitter cables; audio speakers; wireless speakers; headsets for virtual reality games; augmented reality headsets; microphones; hands-free headsets for mobile electronic devices; gaming accessories, namely, grip extenders for video game consoles; network routers; wireless routers; wide area network routers; network access range expanders and extenders; modem cables; computer network adapters; computer network switches; network access hardware, namely, network access points for connecting network computer users; recorded computer software for use as networking ports for computer networking; network communications hubs; recorded computer firmware and recorded software for controlling the operation of wireless routers and network access range expanders and extenders; electrical and electronic controllers to control home electric powered devices, namely, AV media systems, HVAC systems, kitchen appliances, lighting, water systems, security systems, alarms, and motion sensors; power switches for home appliances; power switches for home and kitchen appliances; downloadable computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices In an Office Action dated September 11, 2019, the Trademark Office initially refused registration of Applicant's mark on the grounds of a purported likelihood of confusion with the following registration (the "Cited Registration"):

PLAYA, Registration No. 4420759 for accessories for mobile devices, namely, cases for mobile phones offering protection and storage.

Applicant wishes to advise the Trademark Office that per an Order dated January 13, 2020, the Cited Registration has been cancelled.  The Order cancelling the registration is attached hereto.  Accordingly, Applicant requests that this citation be withdrawn. 

EVIDENCE
Evidence in the nature of copy of Order cancelling the cited registration has been attached.
Original PDF file:
evi_205149289-20200116172951807191_._PLAYA_Cancellation_Order.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Battery chargers; wireless chargers; battery charge devices; charging appliances for rechargeable equipment; USB charging ports; electric charging cables; wireless charging pads; battery packs; rechargeable batteries; mobile phone cases featuring rechargeable batteries; charging docks and charging stations for charging mobile electronic devices and consumer electronics; car chargers, stand chargers and home chargers for charging mobile electronic devices and consumer electronics; computer cables; audio cables; video cables; USB cables; cases and covers for mobile electronic devices; cases and sleeves for laptop computers and tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; screen protectors for laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; stands and mounts for laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; headphones; earphones; headphone audio splitters; headphone splitter cables; audio speakers; wireless speakers; headsets for virtual reality games; augmented reality headsets; microphones; hands-free headsets; grip extenders for video game consoles; network routers; wireless routers; wide area network routers; network access range expanders and extenders; modem cables; computer network adapters; computer network switches; network access hardware, namely, networking access points; recorded computer software for use as networking ports for computer networking; network communications hubs; computer firmware and software for controlling the operation of wireless routers and network access range expanders and extenders; electrical and electronic controllers to control home electric powered devices, namely, AV media systems, HVAC systems, kitchen appliances, lighting, water systems, security systems, alarms, and motion sensors; power switches for home appliances; power switches for home and kitchen appliances; computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices
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: Battery chargers; wireless chargers; battery charge devices; charging appliances for rechargeable equipment; USB charging ports; electric charging cables; wireless charging pads; wireless charging pads for mobile electronic devices; battery packs; rechargeable batteries; mobile phone cases featuring rechargeable batteries; charging docks and charging stations for charging mobile electronic devices and consumer electronics; car chargers, stand chargers and home chargers for charging mobile electronic devices and consumer electronics; car chargers, charging stands and home chargers for charging mobile electronic devices and consumer electronics; computer cables; audio cables; video cables; USB cables; cases and covers for mobile electronic devices; protective cases and covers for mobile electronic devices; cases and sleeves for laptop computers and tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; protective cases and sleeves for laptop computers and tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; screen protectors for laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; screen protectors comprised of tempered glass for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; stands and mounts for laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; stands and mounts for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; headphones; earphones; headphone audio splitters; headphone splitter cables; audio speakers; wireless speakers; headsets for virtual reality games; augmented reality headsets; microphones; hands-free headsets; hands-free headsets for mobile electronic devices; grip extenders for video game consoles; gaming accessories, namely, grip extenders for video game consoles; network routers; wireless routers; wide area network routers; network access range expanders and extenders; modem cables; computer network adapters; computer network switches; network access hardware, namely, networking access points; network access hardware, namely, network access points for connecting network computer users; recorded computer software for use as networking ports for computer networking; network communications hubs; computer firmware and software for controlling the operation of wireless routers and network access range expanders and extenders; recorded computer firmware and recorded software for controlling the operation of wireless routers and network access range expanders and extenders; electrical and electronic controllers to control home electric powered devices, namely, AV media systems, HVAC systems, kitchen appliances, lighting, water systems, security systems, alarms, and motion sensors; power switches for home appliances; power switches for home and kitchen appliances; computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices; downloadable computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devicesClass 009 for Battery chargers; wireless chargers; battery charge devices; charging appliances for rechargeable equipment; USB charging ports; electric charging cables; wireless charging pads for mobile electronic devices; battery packs; rechargeable batteries; mobile phone cases featuring rechargeable batteries; charging docks and charging stations for charging mobile electronic devices and consumer electronics; car chargers, charging stands and home chargers for charging mobile electronic devices and consumer electronics; computer cables; audio cables; video cables; USB cables; protective cases and covers for mobile electronic devices; protective cases and sleeves for laptop computers and tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; screen protectors comprised of tempered glass for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; stands and mounts for use with laptop computers, tablet computers, e-readers, mobile phones, smart phones, portable media players and MP3 players; headphones; earphones; headphone audio splitters; headphone splitter cables; audio speakers; wireless speakers; headsets for virtual reality games; augmented reality headsets; microphones; hands-free headsets for mobile electronic devices; gaming accessories, namely, grip extenders for video game consoles; network routers; wireless routers; wide area network routers; network access range expanders and extenders; modem cables; computer network adapters; computer network switches; network access hardware, namely, network access points for connecting network computer users; recorded computer software for use as networking ports for computer networking; network communications hubs; recorded computer firmware and recorded software for controlling the operation of wireless routers and network access range expanders and extenders; electrical and electronic controllers to control home electric powered devices, namely, AV media systems, HVAC systems, kitchen appliances, lighting, water systems, security systems, alarms, and motion sensors; power switches for home appliances; power switches for home and kitchen appliances; downloadable computer application software for smartphones, tablet computers, PCs, laptops, and PDAs, namely, software for remotely activating electrical and electronic controllers that control the aforesaid home electric powered devices
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.

SIGNATURE(S)
Response Signature
Signature: /Kathryn Starshak/     Date: 01/22/2020
Signatory's Name: Kathryn Starshak
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-781-6013

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.

        
Serial Number: 88588513
Internet Transmission Date: Wed Jan 22 17:19:00 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20200122171900499
464-88588513-7001596ce52ce4d78777378944f
d21febdd0d5cac2b723dcee4010113497ccafee-
N/A-N/A-20200116172951807191