| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76559660 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE S I R : The following is in response to the official communication of May 28, 2004, the content of which has been noted and reviewed. SECTION 2(d) REFUSAL The Examiner has refused registration on the ground that there is a likelihood of confusion between Applicant's mark and DESIGNER SKIN, Registration No. 2,415,111, 2726482 and 2749349. Applicant hereby asserts that a Section 2(d) refusal would be inappropriate in this case because the Applicant and the prior registrant, though separate legal entities, are related companies and constitute a single source. Designer Skin, LLC controls the nature and quality of the commercial activities of the Applicant, Nuvita Market, LLP, including the selection, adoption and use of the company's trademarks. Bradley Grossman and Russell Grossman, together, own 100% of Nuvita Market, LLP and 95% of Designer Skin, LLC. Therefore, there exists a unity of control between Applicant and the prior registrant, such that these entities constitute the same source and obviate any likelihood of confusion in the public mind. In re Wella A.G., 5 U.S.P.Q.2d at 1361 (TTAB 1987), rev'd on other grounds, 858 F2d 725, 8 U.S.P.Q.2d 1365 (Fed. Cir. 1988). The Examining Attorney also stated that he would refuse registration under Section 2(d) if one or more of the pending Application Serial Nos. 76122061, 76382474, 76399516, 76122062, 76134398, 76382471, 76382472, and 76382473, matures into registration. However, the pending applications are also owned by Designer Skin, LLC, and for the reasons stated above, there is no likelihood of confusion between Applicant's mark and the above pending applications. Applicant also notes that the Examiner's objection has come up in other applications, and that it has been resolved by an assertion of unity of control. In particular, this issue was resolved in the application for PARFUME DE NUIT BY ALBERTA FERRETTI (stylized), Registration Number 2,109,467, to which the Examiner is respectfully referred. For all of the foregoing reasons, Applicant respectfully submits that there no longer exists a basis for the Examiner's Section 2(d) refusal. NAMES, LEGAL ENTITIES AND NATIONAL CITIZENSHIPS OF PARTNERS The Examiner has requested the names and the national citizenship of the state or country of organization or incorporation of the general partners of the Applicant partnership. Nuvita Market, LLP, is a partnership organized under the laws of Arizona, composed of Bradley Grossman and Russell Grossman, both Arizona citizens. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | Tanning products |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | Tanning preparations |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use the descriptive wording "SKIN" apart from the mark as shown. |
| SIGNATURE SECTION | |
| SIGNATURE | /Vanessa Riviere/ |
| SIGNATORY NAME | Vanessa Riviere |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 09/15/2004 |
| SIGNATURE | /Vanessa Riviere/ |
| SIGNATORY NAME | Vanessa Riviere |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 09/15/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 15 17:29:08 EDT 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200409 15172908414191-76559660-2 0023bedeecfd3f87465ed7307 265cf41d7-N-N-20040915172 715085070 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76559660 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
RESPONSE S I R : The following is in response to the official communication of May 28, 2004, the content of which has been noted and reviewed. SECTION 2(d) REFUSAL The Examiner has refused registration on the ground that there is a likelihood of confusion between Applicant's mark and DESIGNER SKIN, Registration No. 2,415,111, 2726482 and 2749349. Applicant hereby asserts that a Section 2(d) refusal would be inappropriate in this case because the Applicant and the prior registrant, though separate legal entities, are related companies and constitute a single source. Designer Skin, LLC controls the nature and quality of the commercial activities of the Applicant, Nuvita Market, LLP, including the selection, adoption and use of the company's trademarks. Bradley Grossman and Russell Grossman, together, own 100% of Nuvita Market, LLP and 95% of Designer Skin, LLC. Therefore, there exists a unity of control between Applicant and the prior registrant, such that these entities constitute the same source and obviate any likelihood of confusion in the public mind. In re Wella A.G., 5 U.S.P.Q.2d at 1361 (TTAB 1987), rev'd on other grounds, 858 F2d 725, 8 U.S.P.Q.2d 1365 (Fed. Cir. 1988). The Examining Attorney also stated that he would refuse registration under Section 2(d) if one or more of the pending Application Serial Nos. 76122061, 76382474, 76399516, 76122062, 76134398, 76382471, 76382472, and 76382473, matures into registration. However, the pending applications are also owned by Designer Skin, LLC, and for the reasons stated above, there is no likelihood of confusion between Applicant's mark and the above pending applications. Applicant also notes that the Examiner's objection has come up in other applications, and that it has been resolved by an assertion of unity of control. In particular, this issue was resolved in the application for PARFUME DE NUIT BY ALBERTA FERRETTI (stylized), Registration Number 2,109,467, to which the Examiner is respectfully referred. For all of the foregoing reasons, Applicant respectfully submits that there no longer exists a basis for the Examiner's Section 2(d) refusal. NAMES, LEGAL ENTITIES AND NATIONAL CITIZENSHIPS OF PARTNERS The Examiner has requested the names and the national citizenship of the state or country of organization or incorporation of the general partners of the Applicant partnership. Nuvita Market, LLP, is a partnership organized under the laws of Arizona, composed of Bradley Grossman and Russell Grossman, both Arizona citizens. |
|
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 003 for Tanning products | |
| Original Filing Basis: 1(b). | |
| Proposed: Class 003 for Tanning preparations | |
| Additional Statements | |
| No claim is made to the exclusive right to use the descriptive wording "SKIN" apart from the mark as shown. | |
| 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. §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 application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; 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/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Vanessa Riviere/ Date: 09/15/2004 | |
| Signatory's Name: Vanessa Riviere | |
| Signatory's Position: Attorney | |
| Response Signature | |
| Signature: /Vanessa Riviere/ Date: 09/15/2004 | |
| Signatory's Name: Vanessa Riviere | |
| Signatory's Position: Attorney | |
| Serial Number: 76559660 | |
| Internet Transmission Date: Wed Sep 15 17:29:08 EDT 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20040915172908414191- 76559660-20023bedeecfd3f87465ed7307265cf 41d7-N-N-20040915172715085070 |