| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76621653 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examiner has objected to the specimens submitted with the Statement of Use claiming that the mark depicted on the drawing disagrees with the mark on the specimen. Applicant believes that the mark MIMI is a substantially exact representation of the mark as it appears on the specimen.
Applicant directs the Examiner's attention to In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006). In that case, the mark PSYCHO was held to create a separate commercial impression apart from additional wording and background design that appeared on the specimen. The design in that case was intricate and there was significant additional wording. The Board held however, that the "word Psycho is displayed in different color, type, style, and size, such that it stands out from remainder of design," Id. at 1440, and accepted the specimen of use. The additional words in the instant case are far more easily separated from MIMI. The word MIMI stands on its own in the attached specimens to a greater extent than the word PSYCHO int he In re Big Pig, Inc. case. Applicant should be afforded the same consideration. To hold otherwise unfairly denies Applicant the scope of protection to which it is entitled. In addition, Applicant directs the Examiner's attention to the pink banner at the bottom of the specimen which shows the use of the mark MIMI without the additional wording. Applicant believes that this as well as the use of the mark MIMI on the top of the page are sufficient use of the mark MIMI to warrant acceptance of the specimen and respectfully requests that the Examiner withdraw her requirement for substitute specimens.
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| CORRESPONDENCE SECTION | |
| NAME | Colleen F. Goss |
| FIRM NAME | Fay Sharpe LLP |
| INTERNAL ADDRESS | Seventh Floor |
| STREET | 1100 Superior Avenue |
| CITY | Cleveland |
| STATE | Ohio |
| ZIP/POSTAL CODE | 44114 |
| COUNTRY | United States |
| PHONE | 216-861-5582 |
| FAX | 216-241-1666 |
| uspto@faysharpe.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /colleenfgoss/ |
| SIGNATORY'S NAME | Colleen F. Goss |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 12/11/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 11 12:59:09 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0071211125909662946-76621 653-4101d56b8e4cbecc52794 761af9d69eff33-N/A-N/A-20 071211123024321256 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examiner has objected to the specimens submitted with the Statement of Use claiming that the mark depicted on the drawing disagrees with the mark on the specimen. Applicant believes that the mark MIMI is a substantially exact representation of the mark as it appears on the specimen.
TMEP section 807.12 states that "in a §1 application, an Applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not
necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a
separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen." The mark MIMI as shown on the specimens is clearly offset from
the remainder of the words Vanderhaven's Fabulous Buys.The mark MIMI as shown on the specimens makes a separate and distinct commercial impression apart from the other elements. In the recent
case of In re Royal BodyCare, Inc., 83 USPQ2d 1564, (TTAB 2007) the Board reversed the Examiner's refusal to register the term "NANOCEUTICAL," finding that the term is actually used in a
manner that creates a commercial impression separate and apart from the house mark or trade name "RBC's". MIMI in the previously submitted specimens is set apart from the remainder of the
phrase by a distinctly different font, size, and color. When one looks at the specimen the first thing that catches the eye is the word MIMI.
Applicant directs the Examiner's attention to In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006). In that case, the mark PSYCHO was held to create a separate commercial impression apart from additional wording and background design that appeared on the specimen. The design in that case was intricate and there was significant additional wording. The Board held however, that the "word Psycho is displayed in different color, type, style, and size, such that it stands out from remainder of design," Id. at 1440, and accepted the specimen of use. The additional words in the instant case are far more easily separated from MIMI. The word MIMI stands on its own in the attached specimens to a greater extent than the word PSYCHO int he In re Big Pig, Inc. case. Applicant should be afforded the same consideration. To hold otherwise unfairly denies Applicant the scope of protection to which it is entitled.
In addition, Applicant directs the Examiner's attention to the pink banner at the bottom of the specimen which shows the use of the mark MIMI without the additional wording. Applicant believes that this as well as the use of the mark MIMI on the top of the page are sufficient use of the mark MIMI to warrant acceptance of the specimen and respectfully requests that the Examiner withdraw her requirement for substitute specimens.