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United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
RESPONSE TO OFFICE ACTION
This is in response to the non-final Office Action issued on August 31, 2011 in connection
with the above-referenced application, S/N 77/808,316.
The Examining Attorney has suggested there is a likelihood of confusion between
Applicants mark, XXXBLACKBOOK.COM, and the BLACKBOOK27 mark in U.S. Reg.
3,926,282 formerly owned by Timothy Langan and now owned by Black27, Inc.
Applicant respectfully disagrees.
Applicant has entered into a Consent Agreement dated June 30, 2011, with Black27, Inc.,
the owner of the BLACKBOOK27 registration, U.S. 3,926,282.
In that Consent Agreement, a copy of which has been attached hereto, Black27, Inc. has
acknowledged that no likelihood of confusion will exist as a result of Applicants use of the mark
in the manner reflected in the pending application for the services claimed, and the parties have
agreed upon procedures to avoid any confusion in the future.
Pursuant to TMEP § 1207.01 (d) (viii), this Consent Agreement should resolve any
theoretical concerns regarding a possibility of confusion. Applicant would also note that this
Consent Agreement has previously been deemed sufficient by the USPTO with respect to
Applicants sister application, S/N 77/808, 211, to allow that application to proceed to registration
(U.S. Reg. 4,051,248), and Applicant claims ownership of that Registration.
Based upon the foregoing, Applicant respectfully requests that the Examining Attorney
reconsider the preliminary finding as to a likelihood of confusion which is reflected in the Office
Action, conclude that there is no likelihood of confusion based on the record in this application,
and approve Applicants XXXBLACKBOOK.COM mark for publication.
For the foregoing reasons it is submitted that the application, as amended, is in condition
for allowance and requests that it be approved for publication.
Respectfully submitted,
/peter_e_broadbent, jr./
Peter E. Broadbent, Jr.
Counsel for Applicant
804-697-4109
#1245865
2
RESPONSE TO OFFICE ACTION
This is in response to the non-final Office Action issued on August 31, 2011 in connection
with the above-referenced application, S/N 77/808,316.
The Examining Attorney has suggested there is a likelihood of confusion between
Applicants mark, XXXBLACKBOOK.COM, and the BLACKBOOK27 mark in U.S. Reg.
3,926,282 formerly owned by Timothy Langan and now owned by Black27, Inc.
Applicant respectfully disagrees.
Applicant has entered into a Consent Agreement dated June 30, 2011, with Black27, Inc.,
the owner of the BLACKBOOK27 registration, U.S. 3,926,282.
In that Consent Agreement, a copy of which has been attached hereto, Black27, Inc. has
acknowledged that no likelihood of confusion will exist as a result of Applicants use of the mark
in the manner reflected in the pending application for the services claimed, and the parties have
agreed upon procedures to avoid any confusion in the future.
Pursuant to TMEP § 1207.01 (d) (viii), this Consent Agreement should resolve any
theoretical concerns regarding a possibility of confusion. Applicant would also note that this
Consent Agreement has previously been deemed sufficient by the USPTO with respect to
Applicants sister application, S/N 77/808, 211, to allow that application to proceed to registration
(U.S. Reg. 4,051,248), and Applicant claims ownership of that Registration.
Based upon the foregoing, Applicant respectfully requests that the Examining Attorney
reconsider the preliminary finding as to a likelihood of confusion which is reflected in the Office
Action, conclude that there is no likelihood of confusion based on the record in this application,
and approve Applicants XXXBLACKBOOK.COM mark for publication.
For the foregoing reasons it is submitted that the application, as amended, is in condition
for allowance and requests that it be approved for publication.
Respectfully submitted,
/peter_e_broadbent, jr./
Peter E. Broadbent, Jr.
Counsel for Applicant
804-697-4109
#1245865
2