Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76709168  (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=76709168) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=76709168)
Proposed: (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of product packaging for applicant's goods, namely, the literal and design elements of labels on bottles featuring applicant's goods. In the center of the bottle are the vertically positioned non-latin characters that transliterate to "ALISHAN WULONG CHA". Tothe right, also presented vertically, are the non-latin characters that transliterate to "CHA LIWANG". Immediately below this vertical wording is tall, rectangular design containing Chinese characters. At the bottom of the mark appears a wide cup or bowl with a leaf and a droplet. The bottle shape is only shown for positioning and is not claimed as a feature of the mark.

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

****Marcia Auberger is no longer with Venable LLP. Please address all correspondence to

JANET F. SATTERTHWAITE
VENABLE LLP
PO BOX 34385
WASHINGTON, DC 20043-4385
Phone Number: 202 344 4000
Fax Number: 202 344 8300

 

Likelihood of Confusion

The Examining Attorney has cited a prior registration containing the term ALISHAN. Applicant advises that  Alishan is a geographic very area well known for the production of high-quality oolong tea.  Attached hereto is information about Alishan, or Ali Mountain, and oolong tea.  ALISHAN is disclaimed in the accompanying amendments. As such the citation of the prior registration would be akin to citing a prior registration for wine that also contained the term NAPA or BORDEAUX in the title.

EVIDENCE
Evidence in the nature of information from the Internet describing Alishan as famous for oolong tea has been attached.
Original PDF file:
evi_21614181254-144213620_._OOLONG.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CHA or ALISHAN WULONG CHA apart from the mark as shown.


Transliterations
The non-Latin characters in the mark transliterate to The non-Latin characters in the mark transliterate to and this means ALI MOUNTAIN OOLONG TEA in English.


SIGNATURE(S)
Response Signature
Signature: /Janet F. Satterthwaite/     Date: 07/09/2012
Signatory's Name: Janet F. Satterthwaite
Signatory's Position: Attorney of Record Dc and Va

Signatory's Phone Number: 202-344-4974

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76709168
Internet Transmission Date: Mon Jul 09 15:22:05 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201207091522055
87263-76709168-4902dc5841688ffcba8b75b35
ffdf338874-N/A-N/A-20120709144213620694