B882—013
`
`Applicant:
`
`Pixology Limited
`28 Fredrick Sanger Road
`Surrey Research Park
`Guildford, Surrey GU2 SYD
`England
`
`Goods:
`
`Digital imaging software and apparatus
`
`Date of First Use: August 1999
`
`First Use in Commerce: August 1999
`
`l||||||ll||||llll|||l|||||||||l|||ll|||||ll|l|||||
`
`1 0-02-2000
`u.s. Pam: is TMOfc/‘I'M Mall Rep! ov. am
`
`PICCOLO
`
`TRADEMARK
`Illlllllllllllllllllllllllllllllllllllllllllllll
`
`76139095
`
`

`

`TRADEMARK APPLICA'l'ION SERIAL NO. 76139095
`
`U.S. DEPARTMENT OF COMMERCE
`PATENT AND TRADEMARK OFFICE
`FEE RECORD SHEET
`
`10/06/2000 BTIIIBSE 0000002! 76139095
`
`01 E336!
`
`325.00 N
`
`

`

`APPLICATION FOR REGISTRATION OF TRADE- OR SERVICE MARK
`IN UNITED STATES PATENT AND TRADEMARK OFFICE
`
`MARK:
`
`PICCOLO
`
`CLASS NO:
`
`9
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`PIXOLOGY LIMITED, a company organised and existing under the laws of England and
`Wales, located and doing business at 28 Fredrick Sanger Road, Surrey Research Park,
`Guildford, Surrey GU2 SYD, England
`
`The above-identified applicant requests registration of the mark shown in the accompanying
`drawing in the United States Patent and Trademark Office on the Principal Register
`established by the Act of July 5, 1946 (15 USC. § 1051 et seq., as amended), for the
`following goods and/or services:
`
`Digital imaging software and apparatus
`
`Section 1 ga)
`
`\/
`
`The mark was first used in commerce with the United States in August 1999, and is now
`in use in such commerce. The mark is used by affixing same to labelling and packaging
`and in other ways customary in the trade and three specimens showing the mark as used
`in commerce are presented herewith.
`
`Section 1 [b]
`
`--
`u
`‘us: 31
`-5 ~14
` maade
`
`y
`
`yo
`
`by
`
`-
`
`Section 441d)
`
`

`

`Section 441 e)
`
`\’ being hereby warned that wilful
`i G 95
`5':
`The undersigned "f N I GE L
`false statements and the like so made are punishable by fine or imprisonment, or both,
`under 18 U.S.C.
`§ 1001, and that such wilful false statements may jeopardize the validity
`of the application or any resulting registration, declares that: he/she is lawfully authorized
`to execute this application on behalf of applicant; he/she believes applicant to be the owners
`of the mark sought to be registered and/or entitled to use the mark in commerce; applicant
`has a bona fide intention to us the mark in commerce; to the best of his/her knowledge and
`belief no other person or entity has the right to use said mark in commerce, either in the
`identical form or in such near resemblance thereto as may be likely, when used on or in
`connection with the goods and/or services of such other person or entity,
`to cause
`confusion, or to cause mistake, or to deceive; and that all statements made of his/her own
`knowledge are true and all statements made on information and belief are believed to be
`true.
`
`Applicant appoints ROBIN, BLECKER, DALEY, whose postal address is 330 Madison
`Avenue, New York, New York 10017, telephone number (212) 682-9640, fax number (212)
`682 9648, to prosecute this application, to transact all business in the Patent and Trademark
`Office, or the Courts, in connection therewith, and to receive the certificate of registration
`with full powers of substitution, revocation and addition, simultaneously revoking all
`previous powers.
`
`ROBIN, BLECKER, DALEY, whose postal address is 330 Madison Avenue, New York,
`New York 10017, is hereby designated applicant's representative upon whom notices or
`process in proceedings affecting the mark may be served.
`
`For and on behalf of
`Pixology Limited
`App icant
`
`Dated:
`
`‘— /3’ SM’ 2330 By
`
`(No legalization or other authentication required)
`
`

`

`on»
`
`ROBIN BLECKERé%c DALJ:Y
`
`330 Madison Avenue - New York, New York l()()l7
`
`TY(2l2)682—9640 - F:(2I2)682-9648 - EanuflzIawThn1@WbdJauLcon1
`
`CERTIFICATE OF MAILING BY EXPRESS MAILING
`EXPRESS MAIL LABEL NUMBER: EL251924756US
`
`“POST OFFICE TO ADDRESSEE”
`
`DATE OF DEPOSIT: October 2, 2000
`
`I hereby certify that the enclosed Application for
`Registration of Trade— or Service Mark; $325.00; and return card
`are being deposited by me on October 2, 2000 with the United States
`Postal Service as Express Mail Label Number EL25l924756US,
`in the
`depository located at 332 Madison Avenue, New York, New York 10017,
`and addressed to the Assistant Commissioner of Patents and
`Trademarks, Arlington, VA 22202-3513.
`
`Monica Hendricks
`
`Name of Person Making Deposit
`
`Signature of Person Making Deposit
`
`Attorney Ref.: B882—Ol3
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PAPER NO.
`
`MARK
`
`APPLICANT
`i... I it‘? I T E .3}
`
`"
`
`FORM PTO-1525 (5-9o)
`
`L
`
`ADDRES S:
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`www. uspto. gov
`
`lfno fees are enclnsetl.the21tldress should inc}uLlc the
`\\«>rd.~; "Box Response.» - No I cc ‘
`
`Please provide in all correspondence:
`
`1. Filing Date. serial number, mark and
`Applicant's name.
`2. Mailing date oftliis Otiice action.
`3. Examining Attomey's name and
`Law Office number,
`4 Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and /0 ensure proper handling ofyom‘ response, a label has been cue/().s'ed.
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, prim or type
`the Trademark Law Office Na, Serial No., and Mark in the upper right corner ofyour re.s‘p0n.s‘e.
`
`RE: Serial Number: 76/139095
`
`SUSPENSION LETTER
`
`TAKE OUT 6-MONTH CLAUSE
`
`This letter responds to the applicant's communication filed on August 6, 2001.
`
`the examining attorney noted that pending Application Serial No.
`In the First Office Action,
`75/828631 had a filing date preceding the applicant's filing date and that there may be a likelihood
`of confiision between the marks under Section 2(d) of the Trademark Act.
`The referenced
`application has not yet matured into registrations nor become abandoned; accordingly, pending the
`disposition ofApplication Serial No. 75/828631, action on this application is SUSPENDED.
`
`registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section
`Additionally,
`1052(d), because the mark for which registration is sought so resembles the marks shown in US.
`Registration Nos. 1599429, 1909215, 2030611, and 2410033 as to be likely, when used on the
`identified goods, to cause confusion, or to cause mistake, or to deceive. The examining attorney
`has considered the applicant's arguments carefully and is withdrawing the refiisal with regard to
`Reg. Nos. 1599429, 2030611, and 2410033. However, with regard to the remaining registration,
`
`

`

`76/139095
`
`-2-
`
`the examining attorney is not persuaded. Accordingly, with regard to Reg. No. 1909215, the
`refusal under Section 2(d) is hereby continued.
`
`Additionally, the applicant was required to indicate the date of first use of the mark anywhere,
`indicate the meaning of the mark, amend the identification of goods, and comply with the
`requirements ofa multiple-class application, if necessary. The applicant has indicated the dates of
`use and indicated the meaning of the mark, but has failed to properly amend the identification of
`goods. Accordingly, the requirement for an acceptable identification and compliance with the
`requirements of a multiple-class application if necessary are hereby continued.
`
`Specifically, the wording of the identification remains indefinite. That is, as was indicated in the
`prior office action, the term “apparatus” is broad and could include any number of goods. The
`applicant must amend the wording to identify the specific type of apparatus. Additionally, the
`applicant must clarify the function of the software. For example, the following wording would be
`acceptable:
`
`-
`
`[identify specific goods]
`digital imaging software and apparatus, namely, .
`namely, for the display, management, editing, printing and sharing of digital images and
`interfacing with digital
`imaging apparatus in the nature of
`[indicate
`specific goods].
`
`If the applicant has any questions or needs assistance, please telephone the assigned examining
`attorney.
`
`S(:i,t,c<,cU<
`
`Susan Kastriner Lawrence
`
`Trademark Examining Attorney
`Law Office H3, (703) 308—9l l3 ext. 212
`
`

`

`TRADEMARK EXAMINATION WORKSHEET
`
`MENDMENT STAGE
`
`Name:_TAMMARA BAKER L.O. _l 13
`
`1] NO CHANGE
`
`Date_9/26/01
`
`El PUBLICATION/I?C¢ST7.AgI%l‘l STA9 5
`
`Serial No.
`
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Leal Instrument Examiner LIE
`Amended
`
`Data Element
`
`Class Data
`
`1'5
`
`El Prime/Intemational Class
`El First Use Date
`
`Goods and Services
`El First Use in Commerce Date
`
`in Another Form
`
`El Certification
`
`CI
`
`El
`
`Mark Data
`
`Cl Word Mark
`
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`I3.
`
`El Pseudo Mark
`
`C] Design Search Code
`
`Cl Disclaimer
`
`El Name/Portrait/Consent
`
`Misc. Mark Data
`
`-3.‘!
`
`U Mark Description
`
`CI Lining/Stippling
`I4 Translation
`
`Section 2(1)
`
`Cl Section 2(f) Entire Mark
`
`Foreign Reg. Data
`
`Owner Data
`
`El Section 2(f) Limitation Statement
`
`D Section 2(f) in Part
`
`El Amended Register
`
`El Amended Register Date
`
`El Foreign Country
`Cl Foreign Application Number
`
`El 44(d)
`Cl Foreign Application Filing Date
`
`El Foreign Registration Number
`
`El Foreign Registration Date
`
`El Foreign Registration Expiration Date
`
`El Foreign Renewal Reg. Number
`
`U Foreign Reg. Renewal Expiration Date
`
`El Foreign Renewal Reg. Date
`
`El Owner Name
`
`Cl Addressl
`
`I] City
`
`Cl Zip Code
`
`El Citizenship
`
`Cl Entity Statement
`
`D DBA/AKA/TA
`
`Cl Address2
`
`E] State
`
`El Entity
`
`El Composed of
`
`Amd/Corr Restr.
`
`El Concurrent Use
`
`Assignment(s)/Name Change
`
`Prior U.S. Reg.
`
`Correspondence
`
`El Prior Registration
`
`E] Attorney
`El Attorney Docket Number
`
`El Correspond -. ce Firm Name/Address
`
`I certify that all corrections have been entered in accordance w‘ '
`
`/diting guidelines.
`
`El Domestic Representative
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
`
`(,0)
`
`13
`
`B882-013 191":
`
`g
`
`_ _ _ _ _ _ _ _ _ _ — — — — - — - — — - - - — — - — — — - _ _ — — . __x
`
`In Re the Application of
`
`PIXOLOGY LIMITED
`
`To Register the Mark
`
`PICCOLO
`
`Serial No. 76/139095
`
`1llllllllllllllll1111111111lllllllllllllllllllllll
`
`0306-2001
`u_s.PnNn1
`sh TMOWTM Mull ROD‘ D‘
`
`#75
`
`Trademark Examining
`Attorney:
`Susan Kastriner Lawrence
`Law Office 113
`
`330 Madison Avenue
`
`New York, New York 10017
`August 1, 2001
`
`Assistant Commissioner for Trademarks
`BOX RESPONSES NO FEE
`
`. 2900 Crystal Drive
`
`Arlington, Virginia 22202-3513
`
`Sir:
`
`This is in response to the office action mailed May 22, 2001 (Action No.23: .
`
`‘mu
`
`AMENDMENTS
`
`The application should be amended as follows:
`
`(1) Delete the identification of goods from the application and insert
`
`imaging
`
`software and apparatus, namely, for the display, management, editing, printing and sharing of
`
`.
`.
`.
`.
`.
`.
`digital images and interfacing with digital imaging apparatus '—.
`
`5
`
`(2) Insert — August 1999 — as the date of first use ofthe mark anywhere. //
`
`

`

`/‘
`(3) Insert the following language in the application: --11"/he word “piccolo” is Italian for
`K//7
`”»<\7,t
`/
`
`small and also refers to a small flute. --
`
`REMARKS
`
`K
`
`l
`
`The Trademark Attorney has refused registration under 15 U.S.C. §1052(d) on the ground
`that applicant's mark, when used in connection with its goods, so resembles the marks in
`
`H
`
`Registration Nos. 1599429, 1909215, 203061 land 2410033 as to be likely to cause confusion, to
`
`cause mistake or to deceive. In addition, the Trademark Attorney cites the mark in Application
`
`Serial No. 75/828631 as a potential basis for a Section 2(d) refusal to register. For the reasons
`
`set forth below, applicant respectfully requests reconsideration of this refusal to register.
`
`While the word portions of the marks at issue are similar, applicant submits that the
`
`goods of the parties are not so similar or related as to create a likelihood of confusion. Indeed,
`
`applicant’s goods are so different from the goods covered by the cited registrations and
`
`application that there should not be even the remotest possibility of confusion.
`
`The goods described in the cited registrations and application are as follows:
`
`0 Registration No. 1599429 — equipment for supporting and moving movie and TV
`cameras
`
`Registration No. 1909215 — computer software for the purpose of facilitating
`communications between computer systems, and instructional manuals distributed 1
`therewith as a unit
`‘
`
`Registration No. 2030611 ~ electrical medical instruments, namely, a blood
`testing apparatus containing reagents for clinical or medical laboratory use
`
`Registration No. 2410033 — handheld pH meter not for medical use
`
`Application Serial No. 75/828631 — interactive educational electronic game
`machine comprising a base unit to provide voice, music and sound effects, storage *
`
`

`

`modules, to store Voice, music and sound effects, and overlays for mounting on
`the base unit to provide Various graphic images and/or text, including books and
`puzzles.
`
`In contrast, the application as amended covers digital imaging software and apparatus,
`
`namely, for the display, management, editing, printing and sharing of digital images and
`
`interfacing with digital imaging apparatus. The goods in each of the cited references were
`
`it considered by the Office to be sufficiently different and unrelated so as to able to co-exist.
`
`Applicant’s goods are equally different and unrelated to the goods in each of the cited references.
`
`Only Registration No. 1909215 covers software, and that software is used to facilitate
`
`communications or networking between computers. The mere fact that the goods in this
`
`registration and the subject application may in the broadest sense involve computer software
`
`does not conclusively establish likelihood of confusion. For example, in Safeway Stores Inc. v.
`
`Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1983 (TTAB 1987), the Board held that BEL
`
`ARIA for various sauces and spreads was not likely to cause confusion with BELAIR for a
`
`variety of frozen food and juice products, notwithstanding that the products were all food items.
`
`See, also, In re International Heater Co., 168 USPQ 127, 128 (TTAB 1970) (no likelihood of
`
`confusion between REGENT for gas furnaces and REGENCY for fireplaces and fireplace grills).
`
`Thus, applicant submits that confusion is not likely to result from concurrent use and
`
`registration of the marks here at issue. Any question about the correctness of applicant's position
`
`should be resolved by the presence on the Principal Register, in addition to the cited registrations
`
`and application, of the following registrations and approved applications for “PICCOLO” marks:
`
`

`

`MARK
`
`REG./SER. NO.
`
`Goods
`
`PICCOLO
`
`78006884
`
`Chemicals for use in the manufacture of fertilizers,
`
`herbicides, and plant growth regulators; fertilizers
`for agricultural and domestic use; surfactants for
`herbicides; plant growth regulators for agricultural
`use
`
`PICCOLO
`
`76043912
`
`Canned goods, namely, canned tomato-based food
`sauces
`
`PICCOLO F ORNO 75610208
`
`Restaurant services
`
`PICCOLO
`
`2327958
`
`Bread and rolls
`
`PICCOLO
`
`2221 135
`
`Cheese
`
`PICCOLO
`
`1 PICCOLO
`
`2204740
`
`1955593
`
`Bubble and chewing gum
`
`Toys, namely, miniaturized toy cars
`
`PICCOLO
`
`1422980
`
`Infants’ clothing, namely, baby buntings, sleepers,
`shirts and shorts; and children’s sportswear and
`playwear, namely, jumpsuits, overalls, jackets,
`rompers, T-Shirts, shortalls, dresses, jumpers, shirts,
`blouses, skirts, sunsuits, jogging pants and jackets
`
`2
`
`‘L PICCOLO
`
`0773308
`
`Sparkling wine
`
`The coexistence of these registrations and approved applications together with the cited
`
`1
`
`references indicates that the word PICCOLO is not distinctive or exclusive as used in connection
`
`‘ with a host of products, and that the public has been educated to distinguish between these
`
`different "P1CCOLO“ products. Applicant submits that it should be able to make concurrent use
`
`and registration of a “PICCOLO” mark for still another type of product.
`
`The court in In re E.1. duP0nt de Nemours & C0., 476 F.2d 1357, 177 USPQ 563, 567
`
`f
`
`(CCPA 1973), explained the context within which a Section 2(d) refusal should be considered:
`
`

`

`[T]he question of confusion is related not to the nature of the mark
`but to its effect "when applied to the goods of the applicant." The
`only relevant application is made in the marketplace. The words
`"when applied" do not refer to a mental exercise, but to all of the
`known circumstances surrounding use of the mark.
`
`Thus, the court in duPont stated that evidence as to differences in products and services,
`
`differences in the channels of trade and differences in the circumstances under which persons
`
`encounter the marks must be considered in determining the issue of likelihood of confusion.
`
`‘ Here, the record shows the co-existence of many references to PICCOLO marks for different
`
`products. Each of these PICCOLO products is so different as to be likely to be advertised and
`
`offered for sale to different end users through different channels of trade, demonstrating that
`
`‘ confusion is not likely to result from concurrent use and registration of the marks at issue in
`
`connection with what appear to be very different products and services.
`
`As the application would now seem to be in condition for publication, such action is
`
`respectfully requested.
`
`Res ectfully submitted,
`
`Howard B. Barnaby
`Attorney for Applicant
`Tel.:
`(212) 682-9640
`Fax:
`(212) 682-9648
`Email hbarnaby@rbd-law.com
`
`

`

`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`
`SERIAL NO.
`'.-’fiEx 1.23‘.-"='I3‘;'1’-F3 F‘! K !I|LCHEi"1'
`
`APPLICANT
`1.. I M I TED
`
`I
`.
`'
`_
`‘
`.
`_
`_
`_
`.L3‘ti‘1L.E ‘i’
`F‘-31:13.24 I N .« Bi..ELTl'i.EH 2:
`P2121371?» I N EILE£:l»=::ER I:=,r>¢i_.E‘r’
`23:1:-nzn
`rmr:-xE.as:sr.i
`.-we
`NEH‘
`NY 1 I} Q 1
`___
`
`"3 D
`
`-
`MNUNG DATE
`1:15 /
`1:1 1
`
`FORM PTO-1525 (5-so)
`
`U.s. DEPT. OF COMM. PAT. & TM OFFICE
`
`'-
`
`-i:'.-<'
`
`ADDRESS:
`Assistant Commissioner
`for Trademarks
`2900 Crystal Drive
`Arlington, VA 222o2.3513
`Ifno fcnes are enclosed, the address should include the
`words Box Responses - No Fee.
`
`Please provide in all correspondence:
`
`. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date ofthis Office action.
`. Examining Attorney's name and
`Law Office number.
`. Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, print or type
`the Trademark Law 0 ice No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/139095
`
`FIRST OFFICE ACTION
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`1.
`
`Likelihood of Confusion Refusal
`
`The examining attorney refiises registration under Trademark Act Section 2(d), 15 U.S.C. Section
`1052(d), because the applicant's mark, when used on or in connection with the identified goods and
`services, so resembles the marks in U.S. Registration Nos. 1599429, 1909215, 2030611, and
`2410033 as to be likely to cause confission, or to cause mistake, or to deceive. TMEP section 1207.
`See the enclosed registrations.
`
`The examining attorney must analyze each case in two steps to determine whether there is a
`likelihood of confusion. First, the examining attorney must look at the marks themselves for
`
`

`

`76/139095
`-2-
`In re E. I. DuPont de
`similarities in appearance, sound, connotation and commercial impression.
`Nemours & C0,, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these
`elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
`Second, the examining attorney must compare the goods or services to determine if they are related
`or if the activities surrounding their marketing are such that COI1fi.lSlOI1 as to origin is likely.
`In re
`August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph
`Corp, 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738
`(TTAB 1978).
`
`The applicant seeks to register the mark PICCOLO for “digital imaging software and apparatus”;
`the already-registered marks are all for PICCOLO for “equipment for supporting and moving
`movie and TV cameras” (Reg. No. 1599429), “computer software for the purpose of facilitating
`communications between computer systems” (Reg. No. 1909215), “electrical medical instruments,
`namely a blood testing apparatus containing reagents for clinical or medical laboratory use” (Reg.
`No. 2030611), and “handheld pH meter not for medical use” (Reg. No. 2410033).
`
`In each instance, the applicant’s mark is identical to the registrants’ marks. That is, all are the
`typed version of the word PICCOLO. Thus,
`the applicant’s mark is confusingly similar in
`appearance, sound, connotation and overall commercial
`impression to each of the registrants’
`marks.
`
`If the marks of the respective parties are identical, the relationship between the goods or services of
`the respective parties need not be as close to support a finding of likelihood of confiision as might
`apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
`70 (TTAB 1981).
`
`Moreover, the examining attorney must determine whether there is a likelihood of confusion on the
`basis of the goods identified in the application and registration.
`If the application describes the
`goods broadly and there are no limitations as to their nature, type, channels of trade or classes of
`purchasers, it is presumed that the goods encompass all those of the type described, that they move
`in all normal channels of trade, and that they are available to all potential customers.
`‘
`
`Here, the applicant has broadly identified its goods. That is, “apparatus” could include any of the
`listed goods in the registrants’ identifications. Moreover, the applicant’s software is sufficiently
`related to the registrants’ goods so that purchasers encountering the goods with the identical marks
`would be likely to mistakenly believe that they come from the same source,
`
`Although the examining attorney has refused registration, the applicant may respond to the refiisal
`to register by submitting evidence and arguments in support of registration.
`
`2.
`
`Pending Application
`
`Additionally, the applicant should note that the examining attorney encloses information regarding
`pending Application Serial No. 75/828631. The filing date of the referenced application precedes
`the applicant's filing date. There may be a likelihood of confiision between the two marks under
`Trademark Act Section 2(d), 15 USC. Section l052(d). If the referenced application matures into
`a registration, the examining attorney may refuse registration in this case under Section 2(d). 37
`C.F.R. Section 2.83; TMEP section 1208.01.
`
`

`

`76/139095
`
`3.
`
`Dates of First Use Anywhere
`
`The application specifies the date of first use of the mark in commerce. However, it does not
`specify the date of first use of the mark anywhere. The applicant must provide this date, verified
`by an affidavit or a declaration under 37 C.F.R. Section 2.20. Trademark Act Section l(a)(l)(A),
`15 U.S.C. Section 1051(a)(l)(A); 37 C.F.R. Sections 2.33(a)(l)(vii) and 2.7l(d)(l); TMEP section
`904.01. The applicant must specify a date of first use of the mark anywhere even if it is the same
`as the date of first use in commerce. TMEP section 904.04. If the applicant adopts the date of first
`use in commerce as the date of first use anywhere, the applicant need not verify the amendment.
`
`4.
`
`Meaning of the Mark
`
`The applicant must indicate whether PICCOLO has any significance in the relevant trade, any
`geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.6l(b).
`
`5.
`
`Identification of Goods
`
`The identification of goods is unacceptable as indefinite. Accordingly, the applicant must amend
`the wording of the identification as indicated. Tl\/[EP section 804.
`
`Specifically, the applicant must amend the wording “apparatus” to identify the specific goods by
`common commercial name since such wording could include any number of goods in any number
`of classes. The applicant should note that if such goods are actually software, the applicant must
`include the fiinction and field of the software.
`
`For example, the wording may be amended as follows:
`-
`digital imaging software and apparatus, namely,
`goods by common commercial name].
`
`[identify the specific
`
`In the identification, the applicant must use the common commercial names for the goods, be as
`complete and specific as possible and avoid the use of indefinite words and phrases.
`If the
`applicant chooses to use indefinite terms,
`such as "accessories,"
`"components,"
`"devices,"
`"equipment," "materials," "parts," "systems" and "products," then those words must be followed by
`the word "namely" and the goods listed by their common commercial names. Tl\/[EP sections 804
`and 804.08(c).
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not permitted. 37 C.F.R. Section 2.7 l(b); TMEP section 804.09.
`Therefore, the applicant may not amend to include any goods that are not within the scope of goods
`set forth in the present identification.
`
`6.
`
`Reguirements for a MultiQle—Class Application
`
`international classes. If the
`The application identifies goods that may be classified in several
`applicant prosecutes this application as a combined, or multiple-class, application, the applicant
`must comply with each of the following:
`
`

`

`76/139095
`
`-4-
`
`(1) The applicant must specifically identify the goods in each class and list the goods by
`international class with the classes listed in ascending numerical order. TMEP section
`1113.01.
`
`(2) The applicant must submit a filing fee for each international class of goods not covered
`by the fee already paid.
`37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections
`810.01 and 1113.01. Effective January 10, 2000,
`the fee for filing a trademark
`application is $325 for each class.
`This applies to classes added to pending
`applications as well as to new applications filed on or afier that date.
`
`(3) The applicant must submit:
`
`(a) dates of first use and first use in commerce and one specimen for each class that
`includes goods or services based on use in commerce under Trademark Act
`Section 1(a). The dates of use must be at least as early as the filing date of this
`application.
`37 C.F.R. Sections 2.34(a)(l) and 2.86(a), and the specimen(s)
`must have been in use in commerce at least as early as the filing date of the
`application, and/or
`
`(b) a statement of a bona fide intention to use the mark in commerce on or in
`connection with all the goods or services specified in each class that includes
`goods or services based on a bona fide intention to use the mark in commerce
`under Trademark Act Section 1(b).
`
`(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20
`signed by the applicant to verify (3) above. 37 CFR. Sections 2.59(a) and 2.7l(c).
`
`7.
`
`Responding to This Office Action
`
`No set form is required for response to this Office action. The applicant must respond to each
`point raised. The applicant should simply set forth the required changes or statements and request
`that the Office enter them.
`
`If the applicant has any questions or needs assistance in responding to this Office action, please
`telephone the assigned examining attorney.
`
`a‘
`
`p
`
`//
`
`&{_.A 4'. 44/1 «L K 1;/c¢,4..,»~...___V_\
`
`L
`
`1
`
`Susan Kastriner Lawrence
`Trademark Examining Attorney
`Law Office 113 (703) 308-9113 ext. 212
`
`

`

`*** User: slawrence
`
`*** Serial Number: 73835950
`
`***
`
`5/21/01 4:53:32 PM **
`
`Mark
`
`PICCOLO
`
`[Missing Image]
`
`Goods and Services
`G & S: EQUIPMENT FOR SUPPORTING AND MOVING MOVIE AND
`IC
`009.
`US 026.
`TV CAMERAS.
`FIRST USE: 19881016.
`FIRST USE IN COMMERCE: 19881016
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`73835950
`
`Filing Date
`November 3, 1989
`
`Publication for Opposition Date
`March 13, 1990
`
`Registration Number
`1599429
`
`Registration Date
`June 5, 1990
`
`Owner Name and Address
`(REGISTRANT) EGRIPMENT BV CORPORATION NETHERLANDS 7625 HAYVENHURTS AVENUE
`UNIT 27 VAN NUYS CALIFORNIA 91406
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Affidavit Text
`
`SECT 15.
`
`SECT 8
`
`(6—YR).
`
`SECTION 8(10—YR) 20001222.
`
`Renewal
`1ST RENEWAL
`
`20001222
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`EZRA SUTTON, ESQ.
`
`*** Search: 21 *** Document Number:
`
`8 ***
`
`

`

`*** User: slawrence
`
`*** Serial Number: 74478137
`
`***
`
`5/6/01 3:52:47 PM ***
`
`Mark
`
`PICCOLO
`
`[Missing Image]
`
`Goods and Services
`G & S: computer software for the
`IC
`009.
`US O21 O23 026 036 038.
`purpose of facilitating communications between computer systems, and
`instructional manuals distributed therewith as a unit.
`FIRST USE:
`19941220.
`FIRST USE IN COMMERCE: 19941220
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`74478137
`
`Filing Date
`January 10, 1994
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`October 18, 1994
`
`Registration Number
`1909215
`
`Registration Date
`August 1, 1995
`
`Owner Name and Address
`
`Inc. CORPORATION NEW HAMPSHIRE 11
`(REGISTRANT) Cornerstone Software,
`Trafalgar Square Nashua NEW HAMPSHIRE 03063
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Howard G. Zaharoff
`
`*** Search:
`
`1 *** Document Number: 42 ***
`
`

`

`*** User: slawrence
`
`*** Serial Number: 74528130
`
`***
`
`5/21/01 4:58:21 PM **
`
`Mark
`
`PICCOLO
`
`[Missing Image]
`
`Goods and Services
`instruments, namely
`G & 8: electrical medical
`IC
`010.
`US 026 039 044.
`a blood testing apparatus containing reagents for clinical or medical
`laboratory use.
`FIRST USE: 19951100.
`FIRST USE IN COMMERCE: 19951100
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`74528130
`
`Filing Date
`May 20, 1994
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`September 12, 1995
`
`Registration Number
`2030611
`
`Registration Date
`January 14, 1997
`
`Owner Name and Address
`Inc. CORPORATION CALIFORNIA 1320 Chesapeake Terrace
`(REGISTRANT) Abaxis,
`Sunnyvale CALIFORNIA 94089
`
`Assignment Recorded
`ASSIGNMENT RECORDED
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`E. Lynn Perry
`
`*** Search: 24 *** Document Number: 18 ***
`
`

`

`*** User: slawrence
`
`*** Serial Number: 75673631
`
`***
`
`5/21/01 4:53:32 PM **
`
`PICCOLO
`
`Mark
`
`PICCOLO
`
`Goods and Services
`IC
`009.
`US O21 O23 O26 O36 038.
`medical use.
`FIRST USE: 19910300.
`
`G & S: Handheld pH meter not for
`FIRST USE IN COMMERCE: 19910300
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75673631
`
`Filing Date
`April 2, 1999
`
`Publication for Opposition Date
`September 12, 2000
`
`Registration Number
`2410033
`
`Registration Date
`December 5, 2000
`
`Owner Name and Address
`Inc. CORPORATION CONNECTICUT 584 Park
`(REGISTRANT) Hanna Instruments,
`East Drive Woonsocket RHODE ISLAND 02895
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`*** Search: 21 *** Document Number:
`
`2 ***
`
`

`

`*** User: slawrence
`
`*** Serial Number: 75828631
`
`***
`
`5/21/01 4:58:21 PM **
`
`PICCOLO
`
`PICCOLO
`
`and Services
`interactive educational electronic
`G & S:
`IC 028.
`US O22 O23 O38 050.
`game machine comprising a base unit to provide voice, music, and sound
`effects, storage modules to store voice, music, and sound effects, and
`overlays for mounting on the base unit to provide various graphic images
`and/or text,
`including books and puzzles
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75828631
`
`Filing Date
`October 20, 1999
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`January 30, 2001
`
`Owner Name and Address
`INC. CORPORATION CALIFORNIA 16941
`(APPLICANT) EDUCATIONAL INSIGHTS,
`Keegan Avenue Carson CALIFORNIA 90746
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Joseph W. Price
`
`*** Search: 24 *** Document Number:
`
`6 ***
`
`