Response to Office Action

Generally

The Examining Attorney has initially refused registration of the Application based upon the Examining Attorney's opinion that there is a possible likelihood of confusion between the Mark and the current registration to E.M. Lawrence, Ltd. for the mark REFERENCE POINT stylized (Reg. No. 1,049,664; the "Lawrence Registration"), as well as with the current registration to La Redoute, SA, for the mark REFERENCES (Reg. No. 2,560,846; the "La Redoute Registration"). Applicant respectfully disagrees.

The Examining Attorney has stated his opinion that the Mark, on the one hand, and the Lawrence Registration and the La Redoute Registration, on the other, are all highly similar due to the fact that they share the word "reference" in common. Applicant, notes, however, that the co-existence of the registrations for REFERENCE POINT and REFERENCES creates the argument that the element "reference" is not highly distinctive and that the consuming public can discern one mark with the element "reference" from another.

The Lawrence Registration

Furthermore, Applicant argues that the connotation and commercial impression of the Lawrence Registration is distinguishable from that of the Mark. With respect to the Lawrence Registration, Applicant argues that such mark must be considered as the whole expression "reference point" as both such words are key to conveying the connotation of such mark, namely the identification of a particular point of orientation. That is, neither element can be considered the dominant element of such mark as both are necessary for the comprehension of such mark. Applicant asserts that the mind comprehending the Registrations understands the Lawrence Registration by viewing and considering the two words therein as a single or unitary whole. In Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555, 21 U.S.P.Q.2d 1047 (Fed. Cir. 1991), the court found that in a unitary mark "the mark has a distinct meaning of its own independent of the meaning of its constituent parts." Dena @ 1052. Based upon the foregoing, Applicant asserts that the Lawrence Registration must be considered as a unitary mark wherein neither element is dominant or recessive. Furthermore, Applicant notes that the unitary nature of the Registrations militates against the Registrations being abbreviated to "reference".

Applicant's Mark does not contain the element "point". Applicant argues that the deletion of such word changes both the appearance of the Mark and the sound/cadence of the Mark because such additional syllables are missing. This is crucial as the Lawrence Registration must be viewed as a unitary mark.

In terms of connotation, Applicant notes that a "reference point" is a particular point of orientation. The term "reference", however, is subject to multiple meanings. Attached to this response as Documents 1 and 2 (each of which are incorporated herein by this reference) is a print-out of the definition of "reference" as found in The American Heritage Dictionary of the English Language, Fourth Edition. As can be seen, the definition of "reference" is different from that of "reference point". Accordingly, Applicant argues, the two marks at issue have a different connotation.

The result of all of the aforementioned differences between the Mark and the Lawrence Registration, Applicant argues, is that the two marks are distinctive.

La Redoute Registration

With respect to the La Redoute Registration, Applicant similarly argues that the two marks at issue are distinguishable. In particular, Applicant notes that per the definition of "references" found in The American Heritage Dictionary (the attached Documents 1 and 2), "references" is a transitive verb, whereas "reference" is a noun. Applicant argues that such difference creates a distinctiveness between the two marks in terms of their connotation. That difference, Applicant respectfully submits, is enough to allow the two marks at issue to be distinguished, especially when considered with the relative weakness of the element "reference". That the Trademark Office has allowed the concurrent registration of the Lawrence Registration and the La Redoute Registration is compelling evidence as to the validity of Applicant's argument.

Conclusion

For each of the foregoing reasons, Applicant respectfully asserts that there is no likelihood of confusion between the Mark, on the one hand, and the Lawrence Registration and the La Redoute Registration on the other.