| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76474348 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| The Examiner has indicated that prior US Registration No. 2222330 for CHARLESTON FORGE for "furniture" and prior US Registration No. 1552906, also for "furniture", may be considered as bars to registration of Applicant's mark CHARLESTON for "closet organizers, shelves, shelving, and furniture, all made of wood" under Section 2(d) of the Lanham Act. Applicant respectfully submits that there is no likelihood of confusion between Applicant's mark and the prior cited registrations, and requests that the Examiner approve this Application for publication in the Official Gazette. The Examiner has further refused to register the mark on the grounds that it is "primarily geographically deceptively misdescriptive", under Section 2(e) of the Lanham Act. In support of its position of "no likelihood of confusion", Applicant notes the following United States Trademark Registrations and Application for CHARLESTON variant marks in IC 020, as shown by the records of the USPTO Database, TESS: Mark: CHARLESTON BATTERY BENCH Reg.No.: 1552906 Reg. Date: 08/22/1989 First Use: 12/31/1953 Registrant Status: SC Corporation Mark: CHARLESTON FORGE Reg.No.: 2222330 Reg. Date: 02/09/1999 First Use: 04/03/1989 Registrant Status: NC Corporation Mark: CHARLESTON Reg.No.: 2354815 Reg. Date: 06/06/2000 First Use:03/15/1999 Registrant Status: VA corporation Mark: CHARLESTON TRADING Appln.No.: 75-704441 NOA: 12/26/2000 Applicant Status: NC corporation Since US Registration Nos. 2222330 and 2354815 was registered, and US Application 75-704441 was approved, after the registration of US Registration No. 1552906, and since both US Registration 2354815 was registered, and US Application 75-704441 was approved, after the registration of US Registration No. 2222330, those registrations and application are apparently not thought to be likely to cause confusion with any of the prior CHARLESTON variant marks. Additionally, Applicant notes that two of the above-cited registrations, as well as the above-cited approved application, are owned by corporations incorporated in states other than South Carolina, and doing business in cities other than Charleston. Applicant submits that its mark is no more likely to cause confusion with the prior cited registrations (or any of the other CHARLESTON variant marks cited above) than are any of the three latter-filed registrations and application referenced above, apparently considered likely to cause confusion with any of the other CHARLESTON variant marks cited above, and can as easily peacefully coexist with any and all of them. Nor is Applicant's mark likely to deceive purchasers into believing that Applicant's goods emanate from Charleston, South Carolina. Rather the use of the mark is suggestive or evocative of gracious charm and southern hospitality. See, In Re Fred Gretsch Co., 159 USPQ 60 (TTAB 1968), holding NASHVILLE for guitars to be suggestive of country and western style music. | |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | |
| closet organizers, shelves, shelving, and furniture, all made of wood | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | closet organizers, shelves, shelving, all made of wood |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The goods are manufactured in various countries and distributed through Applicants distribution facilities in Carson, CA. |
| SIGNATURE SECTION | |
| SIGNATURE | /jill s. riola/ |
| SIGNATORY NAME | Jill S. Riola |
| SIGNATORY POSITION | Counsel for Applicant |
| SIGNATORY DATE | 12/15/2003 |
| SIGNATURE | /jill s. riola/ |
| SIGNATORY NAME | Jill S. Riola |
| SIGNATORY POSITION | Counsel for Applicant |
| SIGNATORY DATE | 12/15/2003 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 15 12:51:11 EST 2003 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXX-2003 1215125111447033-76474348 -20068f649c6cb818dbea8bf5 4bc5b2e17cd-N-N-200312151 25011211158 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76474348 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| The Examiner has indicated that prior US Registration No. 2222330 for CHARLESTON FORGE for "furniture" and prior US Registration No. 1552906, also for "furniture", may be considered as bars to registration of Applicant's mark CHARLESTON for "closet organizers, shelves, shelving, and furniture, all made of wood" under Section 2(d) of the Lanham Act. Applicant respectfully submits that there is no likelihood of confusion between Applicant's mark and the prior cited registrations, and requests that the Examiner approve this Application for publication in the Official Gazette. The Examiner has further refused to register the mark on the grounds that it is "primarily geographically deceptively misdescriptive", under Section 2(e) of the Lanham Act. In support of its position of "no likelihood of confusion", Applicant notes the following United States Trademark Registrations and Application for CHARLESTON variant marks in IC 020, as shown by the records of the USPTO Database, TESS: Mark: CHARLESTON BATTERY BENCH Reg.No.: 1552906 Reg. Date: 08/22/1989 First Use: 12/31/1953 Registrant Status: SC Corporation Mark: CHARLESTON FORGE Reg.No.: 2222330 Reg. Date: 02/09/1999 First Use: 04/03/1989 Registrant Status: NC Corporation Mark: CHARLESTON Reg.No.: 2354815 Reg. Date: 06/06/2000 First Use:03/15/1999 Registrant Status: VA corporation Mark: CHARLESTON TRADING Appln.No.: 75-704441 NOA: 12/26/2000 Applicant Status: NC corporation Since US Registration Nos. 2222330 and 2354815 was registered, and US Application 75-704441 was approved, after the registration of US Registration No. 1552906, and since both US Registration 2354815 was registered, and US Application 75-704441 was approved, after the registration of US Registration No. 2222330, those registrations and application are apparently not thought to be likely to cause confusion with any of the prior CHARLESTON variant marks. Additionally, Applicant notes that two of the above-cited registrations, as well as the above-cited approved application, are owned by corporations incorporated in states other than South Carolina, and doing business in cities other than Charleston. Applicant submits that its mark is no more likely to cause confusion with the prior cited registrations (or any of the other CHARLESTON variant marks cited above) than are any of the three latter-filed registrations and application referenced above, apparently considered likely to cause confusion with any of the other CHARLESTON variant marks cited above, and can as easily peacefully coexist with any and all of them. Nor is Applicant's mark likely to deceive purchasers into believing that Applicant's goods emanate from Charleston, South Carolina. Rather the use of the mark is suggestive or evocative of gracious charm and southern hospitality. See, In Re Fred Gretsch Co., 159 USPQ 60 (TTAB 1968), holding NASHVILLE for guitars to be suggestive of country and western style music. | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 020 for closet organizers, shelves, shelving, and furniture, all made of wood | |
| Original Filing Basis: 1(b). | |
| Proposed: Class 020 for closet organizers, shelves, shelving, all made of wood | |
| Additional Statements | |
| The goods are manufactured in various countries and distributed through Applicants distribution facilities in Carson, CA. | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in connection with the goods and/or services listed in the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true as set forth within the original application and/or the submitted amendment/response. | |
| Signature: /jill s. riola/ Date: 12/15/2003 | |
| Signatory's Name: Jill S. Riola | |
| Signatory's Position: Counsel for Applicant | |
| Response Signature | |
| Signature: /jill s. riola/ Date: 12/15/2003 | |
| Signatory's Name: Jill S. Riola | |
| Signatory's Position: Counsel for Applicant | |
| Serial Number: 76474348 | |
| Internet Transmission Date: Mon Dec 15 12:51:11 EST 2003 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2003121512511144703 3-76474348-20068f649c6cb818dbea8bf54bc5b 2e17cd-N-N-20031215125011211158 |