Response to Office Action

MYKONOS

LXL Group Inc.

Response to Office Action

PTO- 1957
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

The table below presents the data as entered.

Input Field
 Entered
SERIAL NUMBER 90019562
LAW OFFICE ASSIGNED LAW OFFICE 127
MARK SECTION
MARK mark
LITERAL ELEMENT MYKONOS
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)
Supposed likelihood of confusion
The Examining Attorney refuses registration because of a supposed likelihood of confusion. As will be demonstrated, there are many, many previous US trademark filings for "Mykonos" marks. Without explaining how or why, the Examining Attorney has selected two of the prior filings as supposedly showing that there is a likelihood of confusion.
The list of prior US trademark filings for "Mykonos" marks includes, but is not limited to, the following:
4633981 MYKONOS GREEK
5048794 MYKONOS
5125374 BERROCO MYKONOS
4601309 MYKONOS
4237878 MYKONOS
5572790 SCORPIOS MYKONOS
3815456 MYKONOS
2293997 MYKONOS
This includes at least the following three registrations above and beyond the two that the Examining Attorney chose to mention.
  • US trademark registration number 5048794 is for Mykonos for "gyro meat".
  • US trademark registration number 3815456 is for Mykonos for "computer software platform for development of web applications".
  • US trademark registration number 2293997 is for Mykonos for "cheese".
When the Examining Attorney discloses only two of the at least half a dozen of the prior filings that the Examining Attorney found in his search, this gives a misleading sense of the nature of trademark rights held by those two prior filers. If the Examining Attorney had disclosed all of the prior filings that he found in his search, it would have provided a more honest sense of the nature of trademark rights held by prior filers. When the full range of prior filings is taken into account, it becomes clear that the true situation is that no prior filer has more than just narrow rights. Maybe the filer in registration number 4237878 has rights in the limited area of cosmetics, but not sweeping rights that extend to (for example) jewelry. Similarly maybe the filer in registration number 4601309 has rights in the limited area of clothing, but again such a filer cannot have sweeping rights that extend to (for example) jewelry.The awkwardness of the Examining Attorney's argument is evident when the reader realizes that the Examining Attorney seems to have claimed to "bridge the gap" from cosmetics into jewelry, and at the same time to have claimed to "bridge the gap" from clothing into jewelry. If so, then the Examining Attorney would be invited to explain how it is (if this bridging of the gap is so easy) that those two filers (the clothing filer and the cosmetics filer) have not already come into conflict. The answer of course is that the purported bridging of the gap is inappropriate for a mark in such a crowded space.Going beyond the two registrations that the Examining Attorney actually disclosed from among the half a dozen or more that turned up in the Examining Attorney's search, we see other registrations that the Examiner did not disclose, including the registration number 5048794 for Mykonos for "gyro meat" and the registration number 3815456 for Mykonos for "computer software platform for development of web applications" and the registration number 2293997 for Mykonos for "cheese". Once the rest of the search results from the Examining Attorney are taken into account, it becomes clear that no one of these filers has broad or sweeping trademark rights extending to jewelry. Said differently, every one of these filers has only very narrow rights at best. The Examining Attorney is invited to acknowledge that on the present record, there is no choice but to conclude that the consumer is already aware that there is a Mykonos for "gyro meat" and a Mykonos for "computer software platform for development of web applications" and a Mykonos for "cheese" and a Mykonos for "clothing" and a Mykonos for "cosmetics". This leaves plenty of room for yet another Mykonos to join this crowded universe in the area of "jewelry".The Examiner is requested to withdraw this refusal.The Examiner professes not to be able to figure out who the attorney is who is representing the applicant in this case. From the Office Action itself it is easy to figure this out. The Office Action itself is addressed to:

OPPEDAHL PATENT LAW FIRM LLC

CARL OPPEDAHL

P O BOX 351240

WESTMINSTER, CO 80035

IIt is easy to see that the applicant is represented by "Carl Oppedahl" of "Oppedahl Patent Law Firm LLC". The attorney provided bar information on filing day and the bar information was in the application on the day the application was filed, including the state of bar admission and the bar number as well as the year of admission to practice and a representation of being admitted to the highest court.

The fields in the application as filed were completed so as to ensure that the firm name would (correctly) be the first line in the mailing address when the USPTO mails out the registration certificate. It seems that the Examining Attorney wants to switch these two fields. If the Examining Attorney is unwilling to proceed without these two fields being swapped, then of course the Examining attorney should swap the two fields. This will then make the mailing address worse and will risk misrouting by the postal service when the USPTO mails out the registration certificate. But if that happens, the USPTO will simply have to prepare and mail out a replacement certificate.
CORRESPONDENCE INFORMATION (current)
NAME OPPEDAHL PATENT LAW FIRM LLC
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE docket-oppedahl@oppedahl.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER LX01.T017
CORRESPONDENCE INFORMATION (proposed)
NAME Oppedahl Patent Law Firm LLC
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE docket-oppedahl@oppedahl.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER LX01.T017
SIGNATURE SECTION
RESPONSE SIGNATURE /s/
SIGNATORY'S NAME Carl Oppedahl
SIGNATORY'S POSITION attorney
DATE SIGNED 03/03/2021
ROLE OF AUTHORIZED SIGNATORY Authorized U.S.-Licensed Attorney
SIGNATURE METHOD Signed directly within the form
FILING INFORMATION SECTION
SUBMIT DATE Wed Mar 03 18:01:02 ET 2021
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20210303180102114717-9001
9562-7709a81fc2ef830f77e3
3992425b0a6b2e8d271a8d29f
3b813b5ff77836615dc38-N/A
-N/A-20210303173156388265


PTO- 1957
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 90019562 MYKONOS(Standard Characters, see http://uspto.report/TM/90019562/mark.png) has been amended as follows:

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

Supposed likelihood of confusion
The Examining Attorney refuses registration because of a supposed likelihood of confusion. As will be demonstrated, there are many, many previous US trademark filings for "Mykonos" marks. Without explaining how or why, the Examining Attorney has selected two of the prior filings as supposedly showing that there is a likelihood of confusion.
The list of prior US trademark filings for "Mykonos" marks includes, but is not limited to, the following:
4633981 MYKONOS GREEK
5048794 MYKONOS
5125374 BERROCO MYKONOS
4601309 MYKONOS
4237878 MYKONOS
5572790 SCORPIOS MYKONOS
3815456 MYKONOS
2293997 MYKONOS
This includes at least the following three registrations above and beyond the two that the Examining Attorney chose to mention.
  • US trademark registration number 5048794 is for Mykonos for "gyro meat".
  • US trademark registration number 3815456 is for Mykonos for "computer software platform for development of web applications".
  • US trademark registration number 2293997 is for Mykonos for "cheese".
When the Examining Attorney discloses only two of the at least half a dozen of the prior filings that the Examining Attorney found in his search, this gives a misleading sense of the nature of trademark rights held by those two prior filers. If the Examining Attorney had disclosed all of the prior filings that he found in his search, it would have provided a more honest sense of the nature of trademark rights held by prior filers. When the full range of prior filings is taken into account, it becomes clear that the true situation is that no prior filer has more than just narrow rights. Maybe the filer in registration number 4237878 has rights in the limited area of cosmetics, but not sweeping rights that extend to (for example) jewelry. Similarly maybe the filer in registration number 4601309 has rights in the limited area of clothing, but again such a filer cannot have sweeping rights that extend to (for example) jewelry.The awkwardness of the Examining Attorney's argument is evident when the reader realizes that the Examining Attorney seems to have claimed to "bridge the gap" from cosmetics into jewelry, and at the same time to have claimed to "bridge the gap" from clothing into jewelry. If so, then the Examining Attorney would be invited to explain how it is (if this bridging of the gap is so easy) that those two filers (the clothing filer and the cosmetics filer) have not already come into conflict. The answer of course is that the purported bridging of the gap is inappropriate for a mark in such a crowded space.Going beyond the two registrations that the Examining Attorney actually disclosed from among the half a dozen or more that turned up in the Examining Attorney's search, we see other registrations that the Examiner did not disclose, including the registration number 5048794 for Mykonos for "gyro meat" and the registration number 3815456 for Mykonos for "computer software platform for development of web applications" and the registration number 2293997 for Mykonos for "cheese". Once the rest of the search results from the Examining Attorney are taken into account, it becomes clear that no one of these filers has broad or sweeping trademark rights extending to jewelry. Said differently, every one of these filers has only very narrow rights at best. The Examining Attorney is invited to acknowledge that on the present record, there is no choice but to conclude that the consumer is already aware that there is a Mykonos for "gyro meat" and a Mykonos for "computer software platform for development of web applications" and a Mykonos for "cheese" and a Mykonos for "clothing" and a Mykonos for "cosmetics". This leaves plenty of room for yet another Mykonos to join this crowded universe in the area of "jewelry".The Examiner is requested to withdraw this refusal.The Examiner professes not to be able to figure out who the attorney is who is representing the applicant in this case. From the Office Action itself it is easy to figure this out. The Office Action itself is addressed to:

OPPEDAHL PATENT LAW FIRM LLC

CARL OPPEDAHL

P O BOX 351240

WESTMINSTER, CO 80035

IIt is easy to see that the applicant is represented by "Carl Oppedahl" of "Oppedahl Patent Law Firm LLC". The attorney provided bar information on filing day and the bar information was in the application on the day the application was filed, including the state of bar admission and the bar number as well as the year of admission to practice and a representation of being admitted to the highest court.

The fields in the application as filed were completed so as to ensure that the firm name would (correctly) be the first line in the mailing address when the USPTO mails out the registration certificate. It seems that the Examining Attorney wants to switch these two fields. If the Examining Attorney is unwilling to proceed without these two fields being swapped, then of course the Examining attorney should swap the two fields. This will then make the mailing address worse and will risk misrouting by the postal service when the USPTO mails out the registration certificate. But if that happens, the USPTO will simply have to prepare and mail out a replacement certificate.

Correspondence Information (current):
      OPPEDAHL PATENT LAW FIRM LLC
      PRIMARY EMAIL FOR CORRESPONDENCE: docket-oppedahl@oppedahl.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is LX01.T017.
Correspondence Information (proposed):
      Oppedahl Patent Law Firm LLC
      PRIMARY EMAIL FOR CORRESPONDENCE: docket-oppedahl@oppedahl.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is LX01.T017.

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: /s/     Date: 03/03/2021
Signatory's Name: Carl Oppedahl
Signatory's Position: attorney
Signature method: Signed directly within the form

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:    OPPEDAHL PATENT LAW FIRM LLC
   CARL OPPEDAHL
   
   P O BOX 351240
   WESTMINSTER, Colorado 80035
Mailing Address:    Oppedahl Patent Law Firm LLC
   CARL OPPEDAHL
   P O BOX 351240
   WESTMINSTER, Colorado 80035
        
Serial Number: 90019562
Internet Transmission Date: Wed Mar 03 18:01:02 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202103031801021
14717-90019562-7709a81fc2ef830f77e339924
25b0a6b2e8d271a8d29f3b813b5ff77836615dc3
8-N/A-N/A-20210303173156388265


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