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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88816940 ECHO(Standard Characters, see http://uspto.report/TM/88816940/mark.png) has been amended as follows:

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

Applicant Amazon Technologies, Inc. ("Amazon"), by and through counsel, responds to the Office Action issued on May 27, 2020. This Application is now owned by Amazon, which owns numerous ECHO and ECHO-formative filings, each with priority over the sole remaining (i.e., non-Amazon) prior-pending applications raised in the May 27 office action for ECHO filed by Echo Label Limited on April 24, 2019. Additionally, Amazon also owns Reg. Nos. 5688421 (AMAZON ECHO), 4760324 (AMAZON ECHO), and 4760325 (AMAZON ECHO) in Classes 9, 35 and 41, respectively, each of which were filed on November 6, 2014, and therefore has priority over the Echo Label pending application. Among others, Amazon also owns a registration for the mark ECHO in Classes 9, 38, 41, and 42 filed April 30, 2015 (Reg. No. 5469992), with priority over Echo Label's ECHO application. As such, Amazon has established its rights in ECHO and ECHO-formative marks in the same classes and for goods and services that are the same as and/or highly related to the Application that clearly predate the Echo Label application described above. Given Amazon's priority, Amazon respectfully submits that the citations of such marks should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; scientific apparatus and instruments, namely, computer hardware, computer peripherals, audio players and recorders, media players and recorders, handheld digital electronic devices, wireless controllers, remote control devices, stand-alone voice controlled information devices, stand-alone voice controlled personal assistant device, home automation control devices, and power adapters; apparatus for recording, transmission or reproduction of sound or images; calculating machines, data processing equipment, computers; computer software; mobile devices for displaying data and video; wearable computer hardware and wearable computer peripherals; cameras; eyewear; eyewear accessories; eyewear cases; glasses; smartglasses; digital cameras; digital video cameras; video recorders; computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data; downloadable computer software and software applications for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; computer software for accessing and transmitting data and content among consumer electronics devices and displays; optical lenses; sunglass lenses; eyeglass lenses; lenses for cameras; cases for spectacles, for pince-nez, and for contact lenses; contact lenses; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 78548 filed 09/02/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Scientific apparatus and instruments, namely, computer hardware, computer peripherals, digital audio players and recorders, media players and recorders, handheld digital electronic devices for recording, organizing transmitting, manipulating, and reviewing text, data, image, and audio files, wireless controllers to monitor and control the functioning of other electronic devices, remote control transmitter for radio-controlled devices, stand-alone voice controlled information devices in the nature of cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; home automation hubs comprised of voice-activated speakers, computer hardware, and recorded software for controlling lighting, appliances, HVAC, security, safety and other home monitoring and control applications; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; apparatus for recording, transmission or reproduction of sound or images; scientific apparatus and instruments, namely, computer hardware, computer peripherals, audio players and recorders, media players and recorders, handheld digital electronic devices, wireless controllers, remote control devices, stand-alone voice controlled information devices, stand-alone voice controlled personal assistant device, home automation control devices, and power adapters; calculating machines, data processing equipment, and computers; downloadable computer software for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; calculating machines, data processing equipment, computers; wearable computer hardware in the nature of smartwatches and wearable computer peripherals in the nature of wireless mice; computer software; cameras; mobile devices for displaying data and video; eyewear; wearable computer hardware and wearable computer peripherals; eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; eyewear cases; optical glasses; eyewear accessories; smartglasses; digital cameras; glasses; digital video cameras; video recorders; computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data; downloadable computer software and software applications for mobile phones, namely, software for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; downloadable computer software for accessing and transmitting data and content among consumer electronics devices and displays; optical lenses; downloadable computer software and software applications for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; sunglass lenses; computer software for accessing and transmitting data and content among consumer electronics devices and displays; eyeglass lenses; lenses for cameras; cases for spectacles, for pince-nez, and for contact lenses; contact lenses; mechanisms for coin-operated apparatus; cash registers, namely, calculating devices; computers and computer peripheral devices; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, diving gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus; cash registers, calculating devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimmingClass 009 for Scientific apparatus and instruments, namely, computer hardware, computer peripherals, digital audio players and recorders, media players and recorders, handheld digital electronic devices for recording, organizing transmitting, manipulating, and reviewing text, data, image, and audio files, wireless controllers to monitor and control the functioning of other electronic devices, remote control transmitter for radio-controlled devices, stand-alone voice controlled information devices in the nature of cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; home automation hubs comprised of voice-activated speakers, computer hardware, and recorded software for controlling lighting, appliances, HVAC, security, safety and other home monitoring and control applications; apparatus for recording, transmission or reproduction of sound or images; calculating machines, data processing equipment, and computers; downloadable computer software for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; wearable computer hardware in the nature of smartwatches and wearable computer peripherals in the nature of wireless mice; cameras; eyewear; eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; eyewear cases; optical glasses; smartglasses; digital cameras; digital video cameras; video recorders; computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data; downloadable computer software and software applications for mobile phones, namely, software for use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data via global and local computer networks and via mobile devices; downloadable computer software for accessing and transmitting data and content among consumer electronics devices and displays; optical lenses; sunglass lenses; eyeglass lenses; lenses for cameras; cases for spectacles, for pince-nez, and for contact lenses; contact lenses; mechanisms for coin-operated apparatus; cash registers, namely, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, diving gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 78548 filed 09/02/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: AMAZON TECHNOLOGIES, INC., a corporation of Nevada, having an address of
      410 TERRY AVENUE NORTH
      SEATTLE, Washington 98109
      United States

Proposed: AMAZON TECHNOLOGIES, INC., a corporation of Nevada, having an address of
      410 TERRY AVENUE NORTH
      SEATTLE, Washington 98109
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4760324, 4760325, 5469992, and others.

Correspondence Information (current):
      ALLISEN PAWLENTY
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): KTS-ECHO@kilpatricktownsend.com

The docket/reference number is 1148605.
Correspondence Information (proposed):
      Allisen Pawlenty
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): KTS-ECHO@kilpatricktownsend.com

The docket/reference number is 1148605.

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: /Thomas M. Hadid/     Date: 10/06/2020
Signatory's Name: Thomas M. Hadid
Signatory's Position: Attorney of Record

Signatory's Phone Number: 3103107013

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:    ALLISEN PAWLENTY
   KILPATRICK TOWNSEND & STOCKTON LLP
   
   607 14TH STREET, NW, SUITE 900
   WASHINGTON, District of Columbia 20005-2018
Mailing Address:    Allisen Pawlenty
   KILPATRICK TOWNSEND & STOCKTON LLP
   607 14TH STREET, NW, SUITE 900
   WASHINGTON, District of Columbia 20005-2018
        
Serial Number: 88816940
Internet Transmission Date: Wed Oct 07 02:51:53 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020100702515361
1019-88816940-75018132cde258738d133bfa26
d916ff53ec3a9832694d91bcc1f57a5185e03efa
-N/A-N/A-20201007024039130831