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

---

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. 90462033 PRIMO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9046203 3/large) has been amended as follows:

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

The examining attorney has refused registration of the mark based on likelihood of confusion with Registration No 2806460 PRIMO for "camera lenses" in Class 9. Applicant's current description of goods and services includes webcams, camera flashes and dashboard cameras, which are the items applicant believes could possibly cause a likelihood of confusion with registrant's PRIMO registration for camera lenses. None of the other applied-for goods relate to cameras and certainly not to camera lenses. Applicant has dropped webcams, camera flashes and dashboard cameras from its description of goods in the instant office action response. Accordingly, applicant respectfully submits that the likelihood of confusion refusal may now be withdrawn, and the application allowed to proceed to registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Webcams; Audio cables; Battery cases; Battery chargers; Cable connectors; Camera flashes; Carrying cases specially adapted for electronic equipment, namely, MP3 players, laptops, tablets, personal digital assistants, wireless phones and mobile phones; Cases adapted for mobile phones; Cell phone battery chargers for use in vehicles; Computer carrying cases; Computer keyboards; Computer mice; Dashboard cameras; Data synchronization cables; Devices for hands-free use of mobile phones; Earphone accessories, namely, earphone cases; Electric charging cables; Electronic cables; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Hands-free kits for phones; Harnesses specially adapted for holding electronic devices, namely, MP3 players, laptops, tablets and mobile phones; Instrument to facilitate text-messaging in the nature of a stylus-type device that is attached to the hand for use in conjunction with personal digital assistants; Mobile telephone batteries; Smartphone mounts; Stands adapted for mobile phones; Stands for handheld digital electronic devices, namely, mobile phones; Stands for personal digital electronic devices, namely, mobile phones; USB (universal serial bus) hardware; USB cables; Wireless cellular phone headsets; Wireless indoor and outdoor speakers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2012 and first used in commerce at least as early as 01/12/2013 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Webcams; Audio cables; Battery cases; Battery chargers; Cable connectors; Carrying cases specially adapted for electronic equipment, namely, MP3 players, laptops, tablets, personal digital assistants, wireless phones and mobile phones; Camera flashes; Cases adapted for mobile phones; Cell phone battery chargers for use in vehicles; Computer carrying cases; Computer keyboards; Computer mice; Data synchronization cables; Devices for hands-free use of mobile phones; Dashboard cameras; Earphone accessories, namely, earphone cases; Electric charging cables; Electronic cables; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Hands-free kits for phones; Harnesses specially adapted for holding electronic devices, namely, MP3 players, laptops, tablets and mobile phones; Instrument to facilitate text-messaging in the nature of a stylus-type device that is attached to the hand for use in conjunction with personal digital assistants; Mobile telephone batteries; Smartphone mounts; Stands adapted for mobile phones; Stands for handheld digital electronic devices, namely, mobile phones; Stands for personal digital electronic devices, namely, mobile phones; USB (universal serial bus) hardware; USB cables; Wireless cellular phone headsets; Wireless indoor and outdoor speakersClass 009 for Audio cables; Battery cases; Battery chargers; Cable connectors; Carrying cases specially adapted for electronic equipment, namely, MP3 players, laptops, tablets, personal digital assistants, wireless phones and mobile phones; Cases adapted for mobile phones; Cell phone battery chargers for use in vehicles; Computer carrying cases; Computer keyboards; Computer mice; Data synchronization cables; Devices for hands-free use of mobile phones; Earphone accessories, namely, earphone cases; Electric charging cables; Electronic cables; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Hands-free kits for phones; Harnesses specially adapted for holding electronic devices, namely, MP3 players, laptops, tablets and mobile phones; Instrument to facilitate text-messaging in the nature of a stylus-type device that is attached to the hand for use in conjunction with personal digital assistants; Mobile telephone batteries; Smartphone mounts; Stands adapted for mobile phones; Stands for handheld digital electronic devices, namely, mobile phones; Stands for personal digital electronic devices, namely, mobile phones; USB (universal serial bus) hardware; USB cables; Wireless cellular phone headsets; Wireless indoor and outdoor speakers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2012 and first used in commerce at least as early as 01/12/2013 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "PRIMO" where the "M" is displayed as a curvy line below two small squares resembling an umlaut.
Correspondence Information (current):
      PHILIP A KANTOR
      PRIMARY EMAIL FOR CORRESPONDENCE: prsak@aya.yale.edu
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Philip A Kantor
      PRIMARY EMAIL FOR CORRESPONDENCE: prsak@aya.yale.edu
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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: /Philip A Kantor/     Date: 08/27/2021
Signatory's Name: Philip A Kantor
Signatory's Position: Attorney of record Nevada Bar No 6701

Signatory's Phone Number: 17022551300 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:    PHILIP A KANTOR
   LAW OFFICES OF PHILIP A KANTOR PC
   
   1781 VILLAGE CENTER CIR STE 120
   LAS VEGAS, Nevada 89134
Mailing Address:    Philip A Kantor
   LAW OFFICES OF PHILIP A KANTOR PC
   1781 VILLAGE CENTER CIR STE 120
   LAS VEGAS, Nevada 89134
        
Serial Number: 90462033
Internet Transmission Date: Fri Aug 27 19:45:21 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202108271945210
61566-90462033-781dfc4ef1793c43fc4a0f9b1
82d2373e8f5c8720ac1be76ffabceca7a36b2a91
2-N/A-N/A-20210827193825689740