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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86867153
`
`LAW OFFICE 121
`
`https://tmng-al.uspto.gov/resting2/api/img/86867153/large
`
`ALWAYS ON
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`The actual argument text is attached in the Evidence section.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (5 pages)
`
`evi_6520722-20190416175044054637_._ALWAYS_ON_Arguments_FOA.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\671\86867153\xml18\RFR0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\671\86867153\xml18\RFR0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\671\86867153\xml18\RFR0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\671\86867153\xml18\RFR0005.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\671\86867153\xml18\RFR0006.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Argument text
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`/Mark Sommers/
`
`Mark Sommers
`
`Attorney of record, DC bar member
`
`202-408-4000
`
`04/16/2019
`
`YES
`
`NO
`
`Tue Apr 16 17:57:18 EDT 2019
`
`USPTO/RFR-XX.XXX.X.X-2019
`
`       
`       
`       
`       
`

`

`TEAS STAMP
`
`0416175718274158-86867153
`-62030edd924baa3ab6ade139
`c2aefdd7cfbfa4e6bf07b7a19
`952da38e6fe2298f71-N/A-N/
`A-20190416175044054637
`
`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86867153 ALWAYS ON(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/86867153/large) has been
`amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`The actual argument text is attached in the Evidence section.
`
`EVIDENCE
`Evidence in the nature of Argument text has been attached.
`Original PDF file:
`evi_6520722-20190416175044054637_._ALWAYS_ON_Arguments_FOA.pdf
`Converted PDF file(s) ( 5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Mark Sommers/     Date: 04/16/2019
`Signatory's Name: Mark Sommers
`Signatory's Position: Attorney of record, DC bar member
`
`Signatory's Phone Number: 202-408-4000
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 86867153
`Internet Transmission Date: Tue Apr 16 17:57:18 EDT 2019
`TEAS Stamp: USPTO/RFR-XX.XXX.X.X-2019041617571827415
`8-86867153-62030edd924baa3ab6ade139c2aef
`dd7cfbfa4e6bf07b7a19952da38e6fe2298f71-N
`/A-N/A-20190416175044054637
`
`        
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket: 04805.0295
`
`Applicant:
`Serial Number:
`
`LG Electronics Inc.
`86867153
`
`Filing Date:
`Mark:
`
`January 6, 2016
`ALWAYS ON
`
`Examining Atty:
`Law Office:
`
`Peter Dang, Esq.
`121
`
`Commissioner for Trademarks
`PO. Box 1451
`
`Alexandria, Virginia 22313—1451
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION
`
`Applicant submits the following remarks in response to the Office Action dated
`
`October 17, 2018.
`
`|.
`
`The Likelihood of Confusion Refusal Should be Withdrawn
`
`The Examining Attorney has refused registration of Applicant’s mark ALWAYS
`
`ON on the ground of likelihood of confusion with Neonode lnc.’s registrations for
`
`ALWAYSON (U.S. Registration Nos. 4832108, 4720446, and 5119713).
`
`With respect to Registration No. 4832108, Neonode has never used the
`
`ALWAYSON mark in connection with computer chips or semiconductors. Jean Patou,
`
`lnc. V. Theon, Inc., 9 F.3d 971, 975, 29 USPQZd 1771 (Fed. Cir. 1993) (“Trademark
`
`ownership results only from use, not from registration”); Lyons V. American College of
`
`Veterinary Sports Medicine and Rehabilitation, 859 F.3d 1023, 1027, 123 USPQ2d
`
`1024 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 366, 199 L. Ed. 2d 265 (2017)
`
`(“[R]egistration by one who did not own the mark at the time of filing renders the
`
`underlying application void ab initio.”) With respect to Registration No. 4720446,
`
`

`

`Serial No. 86867153
`
`Neonode was not commercially using the ALWAYSON mark in connection with the
`
`product shown in the specimen at the time the Statement of Use was submitted. 4
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION ‘3‘; 19:61.50 (5th ed.) (“It is
`
`fundamental to United States trademark registration practice that use must precede
`
`registration. Without use, there is no ‘trademark’ to be recorded on the federal register
`
`of marks”) Both of these registrations are accordingly susceptible to cancellation, and
`
`thus should not preclude registration of Applicant’s ALWAYS ON mark.
`
`As for Registration No. 5119713, the mark essentially identifies screen
`
`technology that detects gestures and touches and is sold exclusively as a computer
`
`hardware component. That technology/product is different from Applicant’s electronic
`
`displays that permanently display date, time, and other information. Applicant’s displays
`
`are integrated into its products, and not sold as standalone products. The only similarity
`
`between the parties’ goods is that each broadly relates to computer
`
`technology/products. That fact alone is insufficient to support a finding of a likelihood of
`
`confusion. See General Electric Company v. Graham Magnetics Incorporated, 197
`
`USPQ 690, 694 (TTAB 1977); Harvey Hubbell incorporated V. Tokyo Seimitsu Co, Ltd,
`
`188 USPQ 517, 520 (TTAB 1975); 4 MCCARTHY § 24:44 (“The Board has cautioned that
`
`there is no per se rule that confusion will always be found as between any and all items
`
`of computer hardware .
`
`.
`
`.
`
`.”); in re lolo Technologies, LLC, 95 USPQZd 1498, 2010 WL
`
`2513865 (TTAB 2010) (There is no per se rule that all computer related goods and
`
`services are “related.”)
`
`Moreover, confusion is further unlikely because these products are integrated
`
`into other products and are presumably bought by sophisticated purchasers who
`
`

`

`Serial No. 86867153
`
`exercise great care and deliberation. Consumers of such goods are unlikely to be
`
`confused by Applicant’s ALWAYS ON mark. Electronic Design & Sales, Inc. v.
`
`Electronic Data Systems Corp, 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992)
`
`(“Sophisticated consumers may be expected to exercise greater care"); integrated
`
`Device Technology, inc. v. Management Science Associates, inc., 2001 WL 826858 at
`
`*7 (“[B]ecause of the very nature of opposer’s [microprocessor] products, many if not
`
`most of which are integrated into systems manufactured by purchasers," the purchasers
`
`are sophisticated); in re RAM Oil, Ltd., LLP, 2009 TTAB LEXIS 586 (TTAB 2009)
`
`(“Since the only overlap in customers is the careful, sophisticated purchasers of
`
`registrant's services, these are the only purchasers who are exposed to both marks.
`
`Therefore, we find that the degree of care likely to be exercised by purchasers of the
`
`relevant goods and services does not support a finding of likelihood of confusion”).
`
`Accordingly, Applicant respectfully submits that confusion with the cited marks is
`
`unlikely.
`
`ll. Applicant’s Mark ALWAYS ON Does Not Convey an Immediate Idea
`of Applicant’s Technology
`
`A term is merely descriptive of goods and services, within the meaning of Section
`
`2(e)(1) of the Trademark Act only if it forthwith conveys an immediate idea of an
`
`ingredient, quality, characteristic, feature, function, purpose, or use of the goods or
`
`services.
`
`If a mark requires some imagination to determine the true nature of the
`
`goods or services, it is not descriptive.
`
`While consumers would likely View Applicant’s mark as arbitrary in relation to
`
`Applicant’s goods, the mark is at the very least suggestive. A term is suggestive if it
`
`requires imagination, thought, and perception to reach a conclusion as to the nature of
`
`

`

`Serial NO. 86867153
`
`the goods. Stix Products, Inc. V. United Merchants & Mfrs, Inc, 160 USPQ 777, 785
`
`(SDNY 1968). Here, though, the mark ALWAYS ON is “inherently distinctive” because
`
`it does not immediately convey the nature of Applicant’s goods. A prospective
`
`consumer encountering the mark might have some vague idea of the general nature of
`
`Applicant’s integrated display, but would have to go through a series of mental steps to
`
`determine the precise nature of the product because the mark does not identify anything
`
`with any degree of particularity.
`
`Finally, Applicant notes that any doubt on the question of mere descriptiveness
`
`must be resolved in favor of publication.
`
`In re LRF Prods, Ltd., 223 USPQ 1250, 1252
`
`(TTAB 1984); In re W8] Corporation, 1 USPQ2d 1571, 1572 (TTAB 1986) (where “we
`
`have doubts about the ‘merely descriptive’ character of the mark before us .
`
`.
`
`.
`
`it is clear
`
`that such doubts are to be resolved in favor of applicants”). With that directive of the
`
`Board, and in View of the foregoing, this case presents, at the least, doubt about the
`
`descriptiveness of Applicant’s mark.
`
`It is therefore respectfully requested that the
`
`refusal under Section 2(e)(1) should be withdrawn.
`
`CONCLUSION
`
`Based on the above, Applicant respectfully requests that the Examining Attorney
`
`approve the application for publication.
`
`

`

`Dated: April 16, 2019
`
`Serial No. 86867153
`
`Respectfully submitted,
`
`LG Electronics, Inc.
`
`By:
`
`\,,/
`Mark Sommers
`Naresh Kilaru
`
`Attorneys for Applicant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW.
`Washington, DC. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202—408—4400
`
`