| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76483303 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| The Examiner initially rejected Applicant's GASOLINE ALLEY mark ("Applicant's Mark") because the Examiner claims that as used in connection with shirts, sweatshirts, and tank tops, Applicant's Mark is ornamental. As acknowledged by the Examiner, the Applicant may overcome the Examiner's ornamentality rejection of Applicant's Mark by showing that Applicant's Mark is an indicator of secondary source or sponsorship for the shirts, jackets, and hats. See also TMEP Section 1202.03(c). TMEP Section 1202.03(c) specifically states that "[t]o show secondary source, the applicant may show ownership of a U.S. Registration on the Principal Register of the same mark for other goods or services based on use in commerce under § 1 of the Trademark Act." For example, in holding that the mark MORK & MINDY was registrable in In re Paramount Pictures, the Trademark Trial and Appeal Board (T.T.A.B.) noted that because the mark MORK & MINDY had been registered as a trademark five other times, clearly purchasers were accustomed to seeing the mark MORK & MINDY used as a trademark to indicate source. 213 U.S.P.Q. 1111, 1114 (T.T.A.B. 1982). As illustrated by Applicant's claim of ownership, Applicant owns U.S. Registration No. 1,403,479 for a mark identical to Applicant's Mark for automobile racing services. Because Applicant's Mark has been registered as a trademark, and purchasers are accustomed to seeing Applicant's Mark function as a trademark as Applicant's Mark has been used as a trademark for racing services since 1955, Applicant's Mark as used in connection with shirts, sweatshirts, and tank tops clearly serves a source-indicating function and is registrable. | |
| ADDITIONAL STATEMENTS SECTION | |
| PRIOR REGISTRATION(S) | Applicant claims ownership of U.S. Registration Number(s) 1,403,479. |
| SIGNATURE SECTION | |
| SIGNATURE | /Rachel St. Peter/ |
| SIGNATORY NAME | Rachel St. Peter |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 01/25/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sun Jan 25 15:56:02 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXXX-200 40125155602957008-7648330 3-200d4b7ce5b36e68ce1a845 658843b8f349-N-N-20040125 155514974046 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76483303 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| The Examiner initially rejected Applicant's GASOLINE ALLEY mark ("Applicant's Mark") because the Examiner claims that as used in connection with shirts, sweatshirts, and tank tops, Applicant's Mark is ornamental. As acknowledged by the Examiner, the Applicant may overcome the Examiner's ornamentality rejection of Applicant's Mark by showing that Applicant's Mark is an indicator of secondary source or sponsorship for the shirts, jackets, and hats. See also TMEP Section 1202.03(c). TMEP Section 1202.03(c) specifically states that "[t]o show secondary source, the applicant may show ownership of a U.S. Registration on the Principal Register of the same mark for other goods or services based on use in commerce under § 1 of the Trademark Act." For example, in holding that the mark MORK & MINDY was registrable in In re Paramount Pictures, the Trademark Trial and Appeal Board (T.T.A.B.) noted that because the mark MORK & MINDY had been registered as a trademark five other times, clearly purchasers were accustomed to seeing the mark MORK & MINDY used as a trademark to indicate source. 213 U.S.P.Q. 1111, 1114 (T.T.A.B. 1982). As illustrated by Applicant's claim of ownership, Applicant owns U.S. Registration No. 1,403,479 for a mark identical to Applicant's Mark for automobile racing services. Because Applicant's Mark has been registered as a trademark, and purchasers are accustomed to seeing Applicant's Mark function as a trademark as Applicant's Mark has been used as a trademark for racing services since 1955, Applicant's Mark as used in connection with shirts, sweatshirts, and tank tops clearly serves a source-indicating function and is registrable. | |
| Additional Statements | |
| Applicant claims ownership of U.S. Registration Number(s) 1,403,479. | |
| Response Signature | |
| Signature: /Rachel St. Peter/ Date: 01/25/2004 | |
| Signatory's Name: Rachel St. Peter | |
| Signatory's Position: Attorney for Applicant | |
| Serial Number: 76483303 | |
| Internet Transmission Date: Sun Jan 25 15:56:02 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXXX-200401251556029570 08-76483303-200d4b7ce5b36e68ce1a84565884 3b8f349-N-N-20040125155514974046 |