| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76468611 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| This response is being made to the Notice of Suspension mailed January 29, 2004. The Examiner's decision to maintain its 2(d) refusal is hereby more fully addressed. The Trademark Office is respectfully requested to reconsider its decision. The Applicant is confused over the Trademark Office's stance on its 2(d) refusal to register the mark LAS SIETE MARCAS in view of the prior registration for the mark LA MARCA. First, upon providing the Trademark Office with a translation of Applicant's mark, which Applicant translates to THE SEVEN BRANDS, the Trademark Office re-translates the mark itself. Which the Applicant has no problem with, but the fact that a foreign word may take on several translations should not rule in disfavor of the Applicant. Applicant maintains that the mark LAS SIETE MARCAS translates into THE SEVEN BRANDS which is completely distinguishable for the translation provided by the registrant in the mark LA MARCA ("THE MARK"). As such allowance and registration should be granted based upon this fact alone. Nevertheless, if even the mark translates as suggested by the Trademark Office into THE SEVEN MARKS. Allowance and registration should still be granted. Historically the Trademark Office has granted registrations in the same class for marks that differ from each other by another term, especially a number. For example, the Office is directed to review the registrations of 2,527,686 for "FIVE SISTERS" and the registrations of 2,495,303 for "THREE SISTERS"; and 2,077,397 for "SEVEN SISTERS". All three registrations are in the same class of goods and services, IC 033. The same holds true for the registration of 2,749,896 for "20 Barrels" and the registration of 1,035,496 for "Three Barrels", again the goods and services are listed in IC 033. Once more, registration number 1,273,022 for "ROZES" and registration number 0546,140 "FOUR ROSES", both registrations are for goods in IC 033. And yet again, registration number 1,521,150 for "FOUR MONKS" and registration number 1,072,850 for "THE MONKS CHOICE", both marks are for goods in IC 033. As such, it is completely obvious that prior marks that have common terms but differ in the use of a number term are registrable for the same class of goods. The same should thus be true for Applicant's mark "LAS SIETE MARCAS". Which is not only different from LA MARCA in sight and sound because Applicant's mark is plural and includes a foreign number "SIETE". But also, the marks are different in meaning, being Applicants mark is THE SEVEN BRANDS and the prior registration is THE MARK. Should the Office have any questions, please call 312-521-2775. | |
| SIGNATURE SECTION | |
| SIGNATURE | /Adam K Sacharoff/ |
| SIGNATORY NAME | Adam K Sacharoff |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 02/02/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 02 17:00:27 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20040 202170027061116-76468611- 200b7df89f92bf1983fc037cd 101e1a060-N-N-20040202165 919481619 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76468611 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| This response is being made to the Notice of Suspension mailed January 29, 2004. The Examiner's decision to maintain its 2(d) refusal is hereby more fully addressed. The Trademark Office is respectfully requested to reconsider its decision. The Applicant is confused over the Trademark Office's stance on its 2(d) refusal to register the mark LAS SIETE MARCAS in view of the prior registration for the mark LA MARCA. First, upon providing the Trademark Office with a translation of Applicant's mark, which Applicant translates to THE SEVEN BRANDS, the Trademark Office re-translates the mark itself. Which the Applicant has no problem with, but the fact that a foreign word may take on several translations should not rule in disfavor of the Applicant. Applicant maintains that the mark LAS SIETE MARCAS translates into THE SEVEN BRANDS which is completely distinguishable for the translation provided by the registrant in the mark LA MARCA ("THE MARK"). As such allowance and registration should be granted based upon this fact alone. Nevertheless, if even the mark translates as suggested by the Trademark Office into THE SEVEN MARKS. Allowance and registration should still be granted. Historically the Trademark Office has granted registrations in the same class for marks that differ from each other by another term, especially a number. For example, the Office is directed to review the registrations of 2,527,686 for "FIVE SISTERS" and the registrations of 2,495,303 for "THREE SISTERS"; and 2,077,397 for "SEVEN SISTERS". All three registrations are in the same class of goods and services, IC 033. The same holds true for the registration of 2,749,896 for "20 Barrels" and the registration of 1,035,496 for "Three Barrels", again the goods and services are listed in IC 033. Once more, registration number 1,273,022 for "ROZES" and registration number 0546,140 "FOUR ROSES", both registrations are for goods in IC 033. And yet again, registration number 1,521,150 for "FOUR MONKS" and registration number 1,072,850 for "THE MONKS CHOICE", both marks are for goods in IC 033. As such, it is completely obvious that prior marks that have common terms but differ in the use of a number term are registrable for the same class of goods. The same should thus be true for Applicant's mark "LAS SIETE MARCAS". Which is not only different from LA MARCA in sight and sound because Applicant's mark is plural and includes a foreign number "SIETE". But also, the marks are different in meaning, being Applicants mark is THE SEVEN BRANDS and the prior registration is THE MARK. Should the Office have any questions, please call 312-521-2775. | |
| Response Signature | |
| Signature: /Adam K Sacharoff/ Date: 02/02/2004 | |
| Signatory's Name: Adam K Sacharoff | |
| Signatory's Position: Attorney | |
| Serial Number: 76468611 | |
| Internet Transmission Date: Mon Feb 02 17:00:27 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20040202170027061116 -76468611-200b7df89f92bf1983fc037cd101e1 a060-N-N-20040202165919481619 |