Response to Office Action

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. 76643371 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The Examining Attorney has objected that the mark as depicted on the drawing does not agree with the mark as it appears on the specimen because “the drawing displays the mark as AMICI, and the specimen shows the mark as AMICI with other descriptive and/or generic terms present.”  The Examining Attorney has therefore required submission of a substitute specimen.  Applicant respectfully disagrees with the finding that the drawing of the mark does not agree with the mark as it appears on the specimen and respectfully submits that no substitute specimen is required.

It is well settled that an applicant may apply to register any element of a composite mark if that element presents a separate and distinct commercial impression as a mark.  See, e.g., In re Servel Inc., 181 F.2d 192, *11 (C.C.P.A. 1950); In re Raychem Corp., 1989 TTAB LEXIS 36, *3 (T.T.A.B. June 29, 1989); TMEP §807.12(d).  “Ordinarily, even if it is used with a trademark, the generic name of a product need not be included as part of the words applicant seeks to register unless it forms a part of a unitary mark.”  In re Raychem Corp., 1989 TTAB LEXIS 36 at *3.  In the instant case, Applicant seeks to register its house mark AMICI, which it has been using for approximately thirty (30) years.  As the Examining Attorney notes, the mark appears on the specimen together with wording that is generic and/or descriptive.  Because this wording is generic and/or descriptive, Applicant’s mark AMICI presents a separate and distinct commercial impression as a mark.  See id. (refusal to register the mark TINEL-LOCK reversed where the specimen displayed the mark as TR06A1-TINEL-LOCK-RING incorporating both the generic term RING and the part number TR06A1).  Accordingly, the specimen submitted with the application is sufficient to support registration of Applicant’s mark AMICI.

Further, the mark AMICI appears no less than four (4) times on the first page of Applicant’s specimen, each time surrounded by different generic and/or descriptive terms.  Since Applicant’s mark is used with a variety of generic and/or descriptive terms, these generic and/or descriptive terms do not serve a source-identifying function.  Instead, the source of Applicant’s services is identified solely by its mark AMICI.  See id. at *5 (“Prospective purchasers … would readily recognize both the part number and the name of the goods as such, and would therefore look only to the trademark “TINEL-LOCK” for source identification.”)  Accordingly, Applicant’s mark AMICI does not form a unitary mark with any of the generic and/or descriptive terms which appear on the specimen and presents a separate and distinct commercial impression as a mark.

Finally, Applicant notes that it does use the mark AMICI alone.  The mark AMICI appears alone at the beginning of the second paragraph on the second page of the specimen (i.e. “Amici practices a flexible investment approach …”).  Further, Applicant uses the mark AMICI alone on promotional material.  Attached as Exhibit A hereto, for example, is a photograph of a hat used by Applicant for promotional purposes on which the mark AMICI appears alone.  Accordingly, Applicant respectfully submits that the mark AMICI presents a separate and distinct commercial impression and that registration of the mark is sufficiently supported by the specimen submitted with the application.

Evidence
Evidence in the nature of a photograph of a hat on which Applicant's mark AMICI appears alone has been attached.
Evidence-1


Additional Statements
"The foreign wording in the mark translates into English as FRIENDS."
Pursuant to the Examining Attorney’s requirement, Applicant submits the following standard character claim: “The mark consists of standard characters without claim to any particular font style, size or color.”

Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature

Signature: /Beth H. Alter/     Date: 07/17/2006
Signatory's Name: Beth H. Alter
Signatory's Position: Attorney
        
Serial Number: 76643371
Internet Transmission Date: Mon Jul 17 19:23:39 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006071719234003
8651-76643371-3326961249cd2b3dcf9ef5f9da
dfce136c2-N/A-N/A-20060717190714042003