Response to Office Action

In response to the Office Action dated March 31, 2004, denying registration on the grounds that the subject mark is merely descriptive of the identified goods, reconsideration is respectfully requested for the following reasons: In making the determination of whether a mark is merely descriptive or suggestive of the identified goods in the application, the Examiner must try to follow some kind of objective reasoning. It is well established that descriptive marks are not entitled to registration on the principal register because they do not serve as an indicator of source and must be left free for public use, not to be exclusively appropriated by any one individual or entity. On the other hand, marks which are determined to be only suggestive of a feature, characteristic, or ingredient of the goods identified in the trademark application are entitled to registration on the principal register. The demarcation line between whether a mark is to be considered descriptive or suggestive is hardly a clear one, its location in different situations difficult to interpret sometimes leading to initial gut feelings or subjective determinations. Applicant takes the position that the instant application for the mark MUSEUM COLLECTION is only suggestive of the goods involved, namely; jewelry, and that it is not merely descriptive of the goods involved. In re Sunbeam Corporation, 152 USPQ 116 states that a mark is not descriptive even though it may suggest one feature or function of the goods. It must be kept in mind that a term may fall in different categories for different goods. In this connection, the words MUSEUM COLLECTION may be used in connection with a wide variety of different goods. For example, it is submitted that the words MUSEUM COLLECTION are no more descriptive of applicants jewelry than they would be for goods such as clothing, children's toys,  or candles to randomly choose a few. In other words, when an average consumer sees the words MUSEUM COLLECTION, it is not thought that such words will convey or be immediately associated with applicants jewelry. Also, it is important to note that Application Serial No. 76/422306 for the mark THE MUSEUM COLLECTION also used in connection with jewelry was published for opposition by the Trademark Office on 8/12/03 and was going to be allowed to register before applicant filed its notice of opposition. What is even more concerning is the fact that the identification of goods in this application listed the jewelry as antique jewelry whereas the instant application is not for antique jewelry but rather traditional jewelry. Applicant does not disagree with the Examiner that the term COLLECTION is descriptive and should perhaps be disclaimed from the application, however it is applicant's position that the term MUSEUM is most definetly not descriptive when applied to applicant's traditional jewelry as is evidenced by some of the other marks having the word MUSEUM therein in International Class 14 on the Principal Register. Please refer to Registration No. 2316058 for the mark MUSEUM RE-CREATIONS, Registration No. 2248105 for the mark MUSEUM WINDOW, Registration No. 2086209 for the mark MUSEUM CRYSTAL HOYA, Registration No. 1806003 for the mark MUSEUM WEAR and Registration No. 1114067 for the mark MUSEUM to only name a few. Therefore, when one takes into consideration the arguments set forth above it is believed that applicants mark is not merely descriptive of the identified goods but only suggestive of a feature or function of the goods involved. Applicant acknowledges the search results in which no similar registered or pending marks were uncovered that would bar the applicant from registering its mark.In light of the foregoing arguments, publication of the application is therefore thought to be in order.The U.S. Patent and Trademark Office is authorized to charge any additional fees incurred as a result of the filing hereof or credit any overpayment to our account #19-0120.