| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76697311 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION
Attached is a Section 2(f) Declaration attesting that Applicant's mark has acquired distinctiveness and secondary meaning as a source indicator to the purchasing public based on extensive advertising, extensive sales and consumer recognition and goodwill built up in the mark. The Declaration attests that Applicant has attained sales exceeding $50 million with this mark over the last ten years alone (Applicant was also selling merchandise from 1992-1999, but sales records are not immediately accessible). Consumers associate the products sold under the mark with Applicant, so that the primary significance of the mark is to indicate source. Therefore, the mark has acquired distinctiveness and secondary meaning. First, Applicant notes that any reasonable doubt as to whether a mark has acquired distinctiveness must be resolved in favor of the applicant. See In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 4 USPQ 2d 1141, 1144 (Fed. Cir. 1987); In re Women's Publishing Co. Inc., 23 USPQ 2d 1876 (TTAB 1992). As a result of 17 years of continuous use by Applicant and its predecessor, and over $50 million in sales, the mark is not understood to constitute a "merely descriptive" phrase used in connection with simply describing the products. An intent-to-use applicant who has used the mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant's use of the mark on other goods and/or services, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a). To that end, Applicant is also the owner of Ser. No. 76696521 for the identical mark for "clothing, namely, tops, shirts, t-shirts, athletic wear, active wear, sleepwear, lounge wear, underwear, thermal underwear, bras, hosiery, and socks," which is a currently pending 1(a) application, based on use in commerce with a claimed date of first use of 1992. It is therefore respectfully requested that the 2(e)(2) refusal be withdrawn. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) BASED ON EVIDENCE | The mark has become distinctive of the goods/services, as demonstrated by the attached evidence. |
| 2(f) EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | e2f-64524534-131451005_._20091216133501.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT8\IMAGEOUT8\766\973\76697311\xml1\ROA0002.JPG |
| \\TICRS\EXPORT8\IMAGEOUT8\766\973\76697311\xml1\ROA0003.JPG | |
| SECTION 2(f) | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. |
| MISCELLANEOUS STATEMENT | The Examining Attorney requests that Applicant amend its goods and services identification to classify sunglasses in Class 9, and backpacks in Class 18. Applicant respectfully requests that it be allowed to resolve the refusal to register based on Section 2(e)(2) before it is required to amend its goods description. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /brian gaynor/ |
| SIGNATORY'S NAME | Brian M. Gaynor |
| SIGNATORY'S POSITION | attorney |
| DATE SIGNED | 12/16/2009 |
| RESPONSE SIGNATURE | /brian gaynor/ |
| SIGNATORY'S NAME | Brian M. Gaynor |
| SIGNATORY'S POSITION | attorney |
| DATE SIGNED | 12/16/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 16 13:24:11 EST 2009 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XX-200 91216132411275879-7669731 1-460eb7dd521a0a265598681 9a2c5e61072-N/A-N/A-20091 216131451005343 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
RESPONSE TO OFFICE ACTION
Attached is a Section 2(f) Declaration attesting that Applicant's mark has acquired distinctiveness and secondary meaning as a source indicator to the purchasing public based on extensive advertising, extensive sales and consumer recognition and goodwill built up in the mark. The Declaration attests that Applicant has attained sales exceeding $50 million with this mark over the last ten years alone (Applicant was also selling merchandise from 1992-1999, but sales records are not immediately accessible). Consumers associate the products sold under the mark with Applicant, so that the primary significance of the mark is to indicate source. Therefore, the mark has acquired distinctiveness and secondary meaning.
First, Applicant notes that any reasonable doubt as to whether a mark has acquired distinctiveness must be resolved in favor of the applicant. See In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 4 USPQ 2d 1141, 1144 (Fed. Cir. 1987); In re Women's Publishing Co. Inc., 23 USPQ 2d 1876 (TTAB 1992).
As a result of 17 years of continuous use by Applicant and its predecessor, and over $50 million in sales, the mark is not understood to constitute a "merely descriptive" phrase used in connection with simply describing the products.
An intent-to-use applicant who has used the mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant's use of the mark on other goods and/or services, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a). To that end, Applicant is also the owner of Ser. No. 76696521 for the identical mark for "clothing, namely, tops, shirts, t-shirts, athletic wear, active wear, sleepwear, lounge wear, underwear, thermal underwear, bras, hosiery, and socks," which is a currently pending 1(a) application, based on use in commerce with a claimed date of first use of 1992.
It is therefore respectfully requested that the 2(e)(2) refusal be withdrawn.
