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. 77002637 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Registration has been refused pursuant to Section 2(d) of the Trademark Act on the grounds that a likelihood of confusion exists between the current application and Reg. No. 806773 for the mark ENHANCE for “girdles, panty girdles, brassieres, panties, corselets, garter belts; ladies' and girls' sleepwear and lingerie consisting of slips, peignoirs, half slips, pajamas, chemises, negligees, night gowns, kimonas, bathing suits, stockings, blouses, gloves, dresses, skirts; and ladies' and girls' sportswear consisting of sweaters and jackets.”   It is respectfully requested that the Examining Attorney reconsider the refusal on the basis of the following and then withdraw the same.

Although the literal portion of Applicant’s mark is similar in sound to the Registrant’s mark, the commercial impressions of the marks are very different.  When determining whether a likelihood of confusion exists between the uses of two marks, the primary consideration may be the connotations of the mark as applied to the respective goods.  See: In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984)[No likelihood of confusion between use of identical mark PLAYERS for shoes and for men’s underwear because “PLAYERS for shoes implies a fit, style, color, and durability adapted to outdoor activities and PLAYERS for men’s underwear implies something else, primarily indoors in nature”]; and In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) [No likelihood of confusion between use of the identical mark BOTTOMS UP for ladies’ and children’s underwear and for men’s suits, coats and trousers because the use of BOTTOMS UP for the men’s clothing items is associated with the drinking phrase, “drink up!” ... “This is hardly the connotation that BOTTOMS UP would generate as applied to applicant’s ladies’ and children’s underwear”].

Registrant’s mark consists of the word, “Enhance,” which is defined in Merriam-Webster’s On-line Dictionary as:

1 obsolete : RAISE

 

2 : HEIGHTEN, INCREASE; especially : to increase or improve in value, quality, desirability, or attractiveness <enhanced the room with crown molding>

 

 

When used in connection with Registrant’s girdles, panty girdles, brassieres, panties, corselets, garter belts; ladies' and girls' sleepwear and lingerie consisting of slips, peignoirs, half slips, pajamas, chemises, negligees, night gowns, kimonas, bathing suits, stockings, blouses, gloves, dresses, skirts; and ladies' and girls' sportswear consisting of sweaters and jackets,” the connotation of the word “enhance” is the increase of desirability or attractiveness.  In other words, the mark connotes that Registrant’s women’s clothes items increase the desirability or attractiveness of the women wearing such clothes.

Applicant’s mark consists of the coined word “INHANCE” in stylized form and a man holding a musical note above his head.   When viewed in its entirety, this mark is different from Registrant’s mark ENHANCE.

“INHANCE” is a coined word and thus has no meaning.  When this word is used in connection with a design containing a musical note, it suggests that the goods and services are related to music, which in fact, they are.

Applicant’s goods and services are: “prerecorded CDs featuring music, prerecorded DVDs featuring music and dancing, downloadable ringtones, graphics, images, music and spoken word transmitted via the Internet; cellular phones or wireless devices, music magazines, caps, t-shirts, sweatshirts, hooded sweatshirts, sweatpants, and jackets, retail store services featuring prerecorded music and video and related merchandise. 

With the exception of the clothing items, none of the goods in the application are remotely related to Applicant’s goods.  Applicant’s clothing items are similarly unrelated to Registrant’s clothing. Applicant’s clothing items are promotional items, which are frequently sold or given away in connection with other goods or services.

Thus in the instant case, given the differences in the commercial impressions of the marks at issue when applied to the relevant goods and services and the differences in the marks when viewed in their entirety, one must conclude that there is no likelihood of confusion.  Accordingly, it is respectfully requested that the refusal be withdrawn.

Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 041 for Retail store services in the field of entertainment, namely, musical and audiovisual works and related merchandise, provided via the internet and other computer and electronic communication networks

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Prerecorded CDs featuring music, prerecorded DVDs and audiovisual recordings featuring music and dancing, , downloadable ringtones, graphics, images, music and spoken word via the Internet; cellular phones or wireless devices
Original Filing Basis: 1(b).
Proposed: Class 009 for Prerecorded CDs featuring music, prerecorded DVDs featuring music and dancing, downloadable ringtones, graphics, images, music and spoken word transmitted via the Internet; cellular phones or wireless devices.
Filing Basis: 1(b).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 025 for Clothing
Original Filing Basis: 1(b).
Proposed: Class 025 for Clothing namely, caps, t-shirts, sweatshirts, hooded sweatshirts, sweatpants, and jackets
Filing Basis: 1(b).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 035 (Original Class: 041 ) for Retail store services featuring prerecorded music and video and related merchandise
Section 1(b), the applicant has 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. (15 U.S.C. Section 1051(b)).
Additional Statements

The mark is not in color

Response Signature
Signature: /Francie R. Gorowitz/     Date: 07/12/2007
Signatory's Name: Francie R. Gorowitz
Signatory's Position: Attorney of Record

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: 77002637
Internet Transmission Date: Thu Jul 12 18:39:46 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200707121839465
96764-77002637-37069c8b3ea8afb80fa23afa5
6bbaa7444e-N/A-N/A-20070712183342260983