| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76608814 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Responsive to the August 15, 2007 Office Action, Applicant hereby requests reconsideration of the refusal under Sections 4 and 14(5)(B) of the Trademark Act on the basis that the subject mark will be used as both a certification mark and trademark. The certification mark of the present application is not identical to the marks of Applicant’s previous applications and registrations, and the certification mark will be perceived as such by consumers. Accordingly, it is respectfully requested that the Examining Attorney withdraw the refusal. The Office Action refuses registration on the basis that the proposed certification mark is “essentially the same as those featured in the enclosed registrations owned by applicant as trademarks for the same or similar goods as well as the enclosed pending applications…” (i.e., Application Nos. 76/583,999, 76/583,960 and 76/656,230 and Registration Nos. 3,145,952 and 3,240,207). However, despite this contention, the subject mark is different from the marks of Applicant’s trademark applications and registrations, and will be perceived as a certification mark. Applicant’s mark consists of a circular design surrounding the wording RECOMMENDED BY COCHLEAR and thus the mark of the subject application is different from the marks referenced by the Examining Attorney in the Office Action. None of the marks in the referenced applications or registrations include the circular design that is present in the certification mark. The circular design creates a significant impression and cannot be disregarded. Such circle designs are frequently used in certification marks to suggest a “seal of approval.” See e.g., In re 88Open Consortium Ltd., 28 U.S.P.Q.2d 1314 (T.T.A.B. 1993) (stating circular design feature is not present in other marks and gives impression of seal, “further accentuating its certification function”). This is an obvious difference with Applicant’s trademarks and indicates the subject certification mark will be perceived as a certification mark. It is thus clear that the certification mark is not identical to Applicant’s other marks. Additionally, the wording in the mark “RECOMMENDED BY” also indicates that the mark is a certification mark, and none of Applicant’s trademarks referenced in the Office Action include this wording. As explained by the Board, wording such as “‘approved by,’ ‘tested by,’ etc.” denote certification marks. Id. at 1315. “Recommended by” is another example of wording that denotes a certification mark. It would be illogical for a company to use such wording for a product it manufactures or sells directly and thus the wording “RECOMMENDED BY” reinforces that the mark is a certification mark and this difference with Applicant’s other trademarks is also significant. It is apparent that the mark as a whole is not identical to Applicant’s other trademarks and that the subject mark as a whole will be perceived as a certification mark. Accordingly, it is respectfully requested that the Examining Attorney withdraw the refusal of registration. The Examining Attorney is advised that Applicant submitted the Amendment to Allege Use on the form provided by the PTO, and Applicant will not use the certification mark, others will. In view of the foregoing, it is respectfully requested that the application be approved for publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jf/ |
| SIGNATORY'S NAME | Jennifer Fraser |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 02/15/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 15 15:53:26 EST 2008 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.X-20 080215155326010629-766088 14-4103941c7455498a21b141 890b4d7fd1969-N/A-N/A-200 80215154942697158 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Responsive to the August 15, 2007 Office Action, Applicant hereby requests reconsideration of the refusal under Sections 4 and 14(5)(B) of the Trademark Act on the basis that the subject mark will be used as both a certification mark and trademark. The certification mark of the present application is not identical to the marks of Applicant’s previous applications and registrations, and the certification mark will be perceived as such by consumers. Accordingly, it is respectfully requested that the Examining Attorney withdraw the refusal.
The Office Action refuses registration on the basis that the proposed certification mark is “essentially the same as those featured in the enclosed registrations owned by applicant as trademarks for the same or similar goods as well as the enclosed pending applications…” (i.e., Application Nos. 76/583,999, 76/583,960 and 76/656,230 and Registration Nos. 3,145,952 and 3,240,207). However, despite this contention, the subject mark is different from the marks of Applicant’s trademark applications and registrations, and will be perceived as a certification mark. Applicant’s mark consists of a circular design surrounding the wording RECOMMENDED BY COCHLEAR and thus the mark of the subject application is different from the marks referenced by the Examining Attorney in the Office Action. None of the marks in the referenced applications or registrations include the circular design that is present in the certification mark. The circular design creates a significant impression and cannot be disregarded. Such circle designs are frequently used in certification marks to suggest a “seal of approval.” See e.g., In re 88Open Consortium Ltd., 28 U.S.P.Q.2d 1314 (T.T.A.B. 1993) (stating circular design feature is not present in other marks and gives impression of seal, “further accentuating its certification function”). This is an obvious difference with Applicant’s trademarks and indicates the subject certification mark will be perceived as a certification mark. It is thus clear that the certification mark is not identical to Applicant’s other marks.
Additionally, the wording in the mark “RECOMMENDED BY” also indicates that the mark is a certification mark, and none of Applicant’s trademarks referenced in the Office Action include this wording. As explained by the Board, wording such as “‘approved by,’ ‘tested by,’ etc.” denote certification marks. Id. at 1315. “Recommended by” is another example of wording that denotes a certification mark. It would be illogical for a company to use such wording for a product it manufactures or sells directly and thus the wording “RECOMMENDED BY” reinforces that the mark is a certification mark and this difference with Applicant’s other trademarks is also significant. It is apparent that the mark as a whole is not identical to Applicant’s other trademarks and that the subject mark as a whole will be perceived as a certification mark. Accordingly, it is respectfully requested that the Examining Attorney withdraw the refusal of registration.
The Examining Attorney is advised that Applicant submitted the Amendment to Allege Use on the form provided by the PTO, and Applicant will not use the certification mark, others will.
In view of the foregoing, it is respectfully requested that the application be approved for publication.