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. 88640675 AER(Standard Characters, see http://uspto.report/TM/88640675/mark.png) has been amended as follows:

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

The Office Action has refused registration for the applied-for mark (AER) based on a likelihood of confusion with the mark in U.S. Registration No. 5240123 (AER MEMORIES OF OLD). Applicant respectfully contends that confusion, mistake, or deception due to any claimed similarity between the marks is unlikely.

The owner of the registered mark is a Swedish corporation named Forgotten Key Aktiebolag (Registrant). AER MEMORIES OF OLD is a mark primarily used by Registrant for a video game in which the character can “transform into a bird and fly to explore and experience a vibrant world of floating islands in the sky.” See the game page on the Steam store http://store.steampowered.com/app/331870/AER_Memories_of_Old/. Although the registered mark’s description includes class 025 for clothing and headgear, there is no evidence that any clothing or headgear is provided by Registrant. Additionally, Registrant announced its shutdown in January 2019. See http://twitter.com/forgottenkeyse?lang=en.

By contrast, Applicant Aer produces bags and accessories for everyday and travel use since 2014. Applicant has received numerous positive reviews and recognition in various online publications, such as Pack Hacker (http://packhacker.com/travel-gear/aer/travel-pack-2-2/) and Wired Magazine (http://www.wired.com/2017/08/review-aer-fit-pack-2/). Applicant’s products are also sold through national department stores, such as Nordstrom (http://www.nordstrom.com/s/aer-travel-pack-2-backpack/5006240).

Based on the dissimilarity of the parties’ primary goods and services, confusion between the applied-for mark and the registered mark would be unlikely. Neither the average customer shopping for travel bags and gear nor the a typical fan of the AER MEMORIES OF OLD video game would likely be confused by the use of both marks. Furthermore, the dissimilarity of established trade channels through which the marks are likely to be sold also weigh in favor of registration of the applied-for mark. For example, Registrant’s goods would appeal to consumers who are fans of their video game and looking for specific branded merchandise associated with the game, such as offered through the Registrant’s website. By contrast, Applicant’s goods are marketed toward consumers looking for technical and specialized clothing and accessories for travel. A fan of the AER MEMORIES OF OLD game searching for branded merchandise would not confuse Applicant’s goods as related to the video game.

Additionally, the registered mark includes the terms MEMORIES OF OLD which form an integral part of the mark. None of these terms are disclaimed, and these additional terms differentiate the registered mark from the term AER in the applied-for mark. As such, there is a distinct commercial impression between Applicant’s mark and the registered mark.

Applicant believes that the pending Application is in a condition for allowance, and requests a Notice of Allowance for this application from the Examining Attorney. If the Examining Attorney has any questions or concerns for the Applicant, the Examining Attorney is encouraged to contact the Undersigned using the information provided below.

Respectfully submitted,

Kwan & Olynick LLP

/Clifford S. Chang/

Clifford S. Chang

Attorney for Applicant (Reg. 69,492)

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 025 for Clothing, namely, tops, bottoms, t-shirts, shirts, sweatshirts, jackets, pants, shorts, underwear; headwear, namely, hats; footwear, namely, shoes, boots, socks; clothing for travel
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: Clothing, namely, tops, bottoms, t-shirts, shirts, sweatshirts, jackets, pants, shorts, underwear; headwear, namely, hats; footwear, namely, shoes, boots, socks; clothing for travel; clothing for travel, namely, tops, bottoms, t-shirts, shirts, sweatshirts, jackets, pants, shorts, underwear, and headwearClass 025 for Clothing, namely, tops, bottoms, t-shirts, shirts, sweatshirts, jackets, pants, shorts, underwear; headwear, namely, hats; footwear, namely, shoes, boots, socks; clothing for travel, namely, tops, bottoms, t-shirts, shirts, sweatshirts, jackets, pants, shorts, underwear, and headwear
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Aer Designs LLC, a limited liability company legally organized under the laws of California, having an address of
      100 Donoso Plz
      Union City, California 94587
      United States

Proposed: Aer Designs LLC, a limited liability company legally organized under the laws of California, having an address of
      100 Donoso Plz
      Union City, California 94587
      United States
      Email Address: XXXX
Correspondence Information (current):
      CLIFFORD S. CHANG
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@kwanip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cchang@kwanip.com; alundy@kwanip.com

The docket/reference number is AERDT001.
Correspondence Information (proposed):
      Clifford S. Chang
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@kwanip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cchang@kwanip.com; alundy@kwanip.com

The docket/reference number is AERDT001.

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: /Clifford S. Chang/     Date: 07/13/2020
Signatory's Name: Clifford S. Chang
Signatory's Position: Attorney of record, CA Bar Member

Signatory's Phone Number: 510-900-9501

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:    CLIFFORD S. CHANG
   KWAN & OLYNICK LLP
   
   2000 HEARST STREET, SUITE 305
   BERKELEY, California 94709
Mailing Address:    Clifford S. Chang
   KWAN & OLYNICK LLP
   2000 HEARST STREET, SUITE 305
   BERKELEY, California 94709
        
Serial Number: 88640675
Internet Transmission Date: Mon Jul 13 19:03:15 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020071319031591
9088-88640675-740f1c35762635cb6c7473d397
559ded9019d6acdd19e3376ff27abf9af6fd53-N
/A-N/A-20200713185449175359