Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77002063 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

REMARKS

                    The Examining Attorney has refused registration of applicant’s mark MANHATTAN & design for use on "jewelry, precious and semi-precious gemstones," as amended in Class 14 and "adverting services" on the grounds of a likelihood of confusion with the mark MANHATTAN in U.S. Registration No. 2028100. For the reasons discussed below, applicant respectfully requests that the Examining Attorney withdraw her refusal to register the present application .

THERE ARE SIGNIFICANT DIFFERENCES BETWEEN THE MARKS

There is no likelihood of confusion between applicant’s mark MANHATTAN & design and the mark MANHATTAN in the cited registration.

The Applicant’s goods and services, as amended are not related to the goods covered in the registration as watches and watch parts. Now that applicant has amended the application to delete watches, any likelihood of confusion would be obviated. As the Examining Attorney can appreciate, purchasers of jewelry are highly sophisticated and not likely to be confused between similar marks used on jewelry on the one hand and watches on the other. This level of sophistication and discrimination of prospective purchasers of jewelry items precludes any likelihood of confusion between the two parties goods. See Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 212 USPQ 246 (1^st Cir. 1981).

In the present instance, the goods identified as "watches and watch parts" and applicant’s "jewelry and precious and semi-precious stones" are not likely to travel through the same trade channels. Here the Examining Attorney has failed to consider the nature of purchasing jewelry and the deliberation of prospective purchasers when making such purchase. After careful inspection and deliberation, which is what almost always happens in a jewelry purchase, jewelry purchasers would not be confused by the coexistence of both parties’ marks in the marketplace.

Moreover, applicant already owns two prior U.S. Registrations for the mark MANHATTAN, namely, U.S. Registration No. 1903511 and 2983585. The Trademark Office allowed the cited registration 2028100 to coexist with applicant’s registrations and accordingly, the present application should not be precluded from registration.

CONCLUSION

For the above reasons, applicant further requests that the refusal to register its mark on the basis of Section 2(d) of the Trademark Act be withdrawn.

Applicant believes that it has complied with all of the Examining Attorney’s outstanding requirements and applicant respectfully requests favorable action by the Examining Attorney. The Examining Attorney is encouraged to contact the undersigned for any issues which require further attention.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 014 for Jewelry; precious and semi-precious gemstones and watches
Original Filing Basis: 1(b).
Proposed: Class 014 for Jewelry; precious and semi-precious gemstones
Filing Basis: 1(b).
Additional Statements

"Applicant claims ownership of U.S. Registration Number(s) 1903511, 2983585."

"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) 1903511 and 2983585. "

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: /DMB/      Date: 06/13/2007
Signatory's Name: Donna Mirman Broome
Signatory's Position: Attorney

Response Signature
Signature: /DMB/     Date: 06/13/2007
Signatory's Name: Donna Mirman Broome
Signatory's Position: Attorney

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: 77002063
Internet Transmission Date: Wed Jun 13 12:39:57 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20070613123957291
805-77002063-37072f89fe6f37b5299ecf4cbeb
178b8374-N/A-N/A-20070613123341669752