PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76640877 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

In response to the Priority Action dated September 21, 2005, applicant submits the following amendments and remarks:

Principal Register - Section 2(f)

Applicant herein amends the application to seek registration under Section 2(f) on the basis of applicant's ownership of a prior registration on the Principal Register (i.e. Reg. No. 2,210,129) for the "same mark" and the same goods.  The mark in the present application, "BALLARD" in standard character form, is the same as that previously registered, i.e. "BALLARD" in stylized form. 

 

A proposed mark is the "same mark as a previously-registered mark for the purpose of 37 C.F.R. §2.41(b) if it is the "legal equivalent" of such a mark. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). See also In re Best Products Co., Inc., 231 USPQ 988, 989 n.6 (TTAB 1986) ("[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences."); In re Loew's Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984), aff'd, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) ("We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule."); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06 (TTAB 1977) ("[P]ersons exposed to applicant's registered mark ... would, upon encountering [applicant's yellow rectangle and red circle design] ..., be likely to accept it as the same mark or as an inconsequential modification or modernization thereof.... [A]pplicant may 'tack on' to its use of the mark in question, the use of the registered mark ... and therefore may properly rely upon its registration in support of its claim of distinctiveness herein.").

The stylization of the mark in the prior registration is very subtle, merely a lightning-bolt shape forming the interior of the letter "A."  The other letters are identical.  As a result, the marks create the same commercial impression as each other.  Thus, under the legal test recited above, the marks should be considered identical for the purpose of a Section 2(f) analysis.

Prior Registration 

Applicant herein amends the application to state that applicant is the owner of U.S. Reg. No. 2210129.

Conclusion

In view of the above, applicant believes the application is in condition for publication.  If questions remain, the Examining Attorney is invited to contact applicant's counsel, Kevin S. Costanza, by email at KevinC.docketing@SeedIP.com or by telephone at (206) 622-4900.


Additional Statements
"Applicant claims ownership of U.S. Registration Number(s) 2210129."
"The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s) 2210129. "

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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: /KSC/      Date: 11/16/2005
Signatory's Name: Kevin S. Costanza
Signatory's Position: Attorney for Applicant

Response Signature

Signature: /KSC/     Date: 11/16/2005
Signatory's Name: Kevin S. Costanza
Signatory's Position: Attorney for Applicant
        
Serial Number: 76640877
Internet Transmission Date: Wed Nov 16 15:39:16 EST 2005
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20051116153916
420989-76640877-320ad848a7f8f1a6b2c218d6
54ced182c-N/A-N/A-20051116145909882182