Apple's Trademark Snapshot Amendment form In-Part

Three components of Apple's trademark snapshot amendment form are shown below that clearly mark the date it was filed, that it was for Thunderbolt and that the "current owner" is Apple Inc. Nowhere to be found is an assignment of this trademark to Intel.

If You Fail, Then Try, Try Again

Apple certainly isn't getting a free ride through the trademark process on this one. The following information found in Apple's document to the USPTO shows that the trademark was originally refused along the way. Apple's documented follow-up illustrates that they've made many changes to the description of Thunderbolt in an effort to clear it for passage. The following information is directly from the USPTO's "Response to Office Action" form without editing:

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85314959 has been amended as follows:

ARGUMENT(S)

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

Section 2(d) refusal

The Trademark Office has refused registration of the present application under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the following registered marks:

· Trimble Navigation Ltd.'s registration of THUNDERBOLT for a "satellite navigation system, namely, a global positioning system featuring a clock" (RN 2,597,182);

· Spectrum Electronics, Inc.'s registration of THUNDERBOLT and Design for a "hand held severe storm detector" (RN 2,515,114); and

· IGT's Corporation's registration of THUNDERBOLT 7S for "gaming machines, namely, devices which accept a wager" (RN 3,687,301).

The refusal was issued solely with respect to the following goods covered by Applicant's [Apple's] original application, on the premise that the following goods could encompass the cited registered goods: 

· Handheld digital electronic devices

· Mobile digital electronic devices

· Handheld and mobile digital electronic devices for the sending and receiving of digital data

· Electronic handheld units for the wireless receipt, storage and/or transmission of data and messages

Applicant [Apple] has now revised its identification of goods to avoid overlap with the cited goods:

· The terms "handheld digital electronic devices" and "mobile digital electronic devices" have been deleted, and replaced with "handheld personal computers," "tablet computers" and "personal digital assistants."

· The reference to "other digital data", which was cited in the refusal, has been deleted, and the revised identification now reads "handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, messages, audio, video, images and text."

· The reference to "data", which was cited in the refusal, has been deleted, and the revised identification now reads "electronic handheld units for the wireless receipt, storage and transmission of messages, audio, video, images and text."

As such, the scope of the application is no longer broad enough to encompass the goods in the cited registrations. Applicant therefore respectfully requests that the examining attorney withdraw the Section 2(d) refusal, and approve this application for publication.

Filing Basis

Applicant wishes to rely solely on Section 1(b) as a filing basis for registration, and hereby deletes Section 44(e) as an additional filing basis. However, Applicant wishes to retain the priority date of its foreign application under Section 44(d) of the Trademark Act.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:

Current: Class 009 for Computers, computer peripheral devices; computer hardware; microprocessors; cables; connectors; handheld digital electronic devices; mobile digital electronic devices, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; mobile telephones; cameras; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; apparatus for data storage; digital audio and video devices; digital music and/or video players.

Original Filing Basis:

Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Jamaica application number 56869 filed 11/09/2010]. 15 U.S.C.Section 1126(d), as amended.

Proposed:  

[In the paragraph below, you could clearly see that Apple was forced to to remove certain objectionable descriptors from their original submission.]

Tracked Text Description: Computers, computer peripheral devices; computer hardware; microprocessors; cables; computer cables; connectors; electrical and electronic cables; handheld electronic devices; cable connectors; mobile digital electronic devices, handheld mobile digital devices for sending and receiving telephone calls, faxes, electronic mail, and other digital data; electrical and electronic connectors; handheld personal computers; tablet computers; electronic handheld units for the wireless receipt, storage and/or transmission of datat and messages, and electronic devices that enable the user to keep track of or manage personal information; personal digital assistants; apparatus for storage data; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, messages, audio, video, images, and text; digital audio and video devices ; mobile telephones; digital music and/or video players; cameras; electronic handheld units for the wireless receipt, storage and transmission of messages, audio, video, images, and text; electronic devices that enable the user to keep track of or manage personal information; computer hardware for data storage; digital audio and video devices, namely, digital audio and video players and recorders; digital music players

Class 009 for Computers, computer peripheral devices; computer hardware; microprocessors; computer cables; electrical and electronic cables; cable connectors; electrical and electronic connectors; handheld personal computers; tablet computers; personal digital assistants; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, messages, audio, video, images, and text; mobile telephones; cameras; electronic handheld units for the wireless receipt, storage and transmission of messages, audio, video, images, and text; electronic devices that enable the user to keep track of or manage personal information; computer hardware for data storage; digital audio and video devices, namely, digital audio and video players and recorders; digital music players.

Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Jamaica application number 56869 filed 11/09/2010]. 15 U.S.C.Section 1126(d), as amended.

As long as new information concerning Thunderbolt continues to illustrate that Apple is still the owner, we'll keep publishing it until clear information shows us that Apple has filed an assignment of the trademark.

Notice: Patently Apple presents a basic summary of new trademark filings with their associated graphics for journalistic news purposes as each such trademark is revealed by the U.S. and/or other foreign Patent & Trademark Offices. This category covers a few Industrial Design reports each year while others could be found in our granted patent archives. Readers are cautioned that the full text of any trademark application should be read in its entirety for further details. About Comments: Patently Apple reserves the right to post, dismiss or edit comments.

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