UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT: Dean Intellectual Property Services, L.P.
DATE OF ACTION: August 18, 2003
SERIAL NO.: 76/498,698
FILING DATE: March 12, 2003
EXAMINING
ATTORNEY: Darryl M. Spruill
LAW OFFICE: 112
ACTION: No. 1
MARK: CRYSTAL FALLS
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202
APPLICANT'S RESPONSE TO OFFICE ACTION
Applicant, Dean Intellectual Property Services, L.P., by assignment at
reel 2770/frame 0383, submits this response to Office Action No. 1 dated
August 18, 2003.
LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of CRYSTAL FALLS (the
"Mark") on the basis that the Mark, when used on the identified goods, so
resembles the mark in Registration No. 2,630,571 so as to cause a
likelihood of confusion. Applicant respectfully submits that Registration
No. 2,630,571 was cancelled on September 5, 2003. A copy of the
Cancellation Notice is attached hereto for the Examining Attorney's
records.
REFUSAL-GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
A. Section 2(f) Suggested ? Distinctiveness Based on Five Years' Use
Applicant respectfully requests that the application be amended to
seek registration under Trademark Act Section 2(f), 15 U.S.C. Section
1052(f), based on acquired distinctiveness to overcome the 2(e)(2) and
2(e)(3) refusals. Accordingly, Applicant submits herewith that the Mark
has become distinctive of the goods and services through the Applicant's
substantially exclusive and continuous use in commerce for at least the
five years immediately preceding the date of this statement.
INFORMALITY
POTENTIAL CITATION OF PRIOR-FILED APPLICATION
Applicant acknowledges the Examining Attorney's information
regarding pending Application Serial No. 78/444595.
REMARKS
Applicant respectfully requests that the Examining Attorney withdraw
his refusal and permit Applicant's mark to proceed to publication.
Respectfully submitted,
/bridget griffin johnson/
Bridget Griffin Johnson
Attorney for Applicant
214-303-3411
tms@deanfoods.com
DECLARATION
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. 1001, and that such willful false statements may jeopardize the
validity of the application or any resulting registration, declares that
she is properly authorized to execute this Declaration on behalf of the
applicant; she believes the applicant to be the owner of the trademark mark
sought to be registered; she declares that the trademark is in use in
commerce and has been in continuous use in commerce at least five years
immediately preceding the date of this Declaration; and all statements made
of her own knowledge are true; and all statements made on information and
belief are believed to be true.
Date: 2/03/2004 /bridget grifffin johnson/
(214) 303-3411 Bridget Griffin
Johnson
Telephone Number Attorney for Applicant
(See attached file: 2630571 Cancellation.jpg)
