Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 77116746 has been amended as follows:

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

The Examining Attorney has refused the application finding it primarily geographically descriptive of the origin of applicant's services. The Applicant submits that the mark in its entirely has gained secondary meaning as associated with real estate development, sales and leasing services of Vulcan Real Estate. Though the trademark includes the geographic terms "Seattle", "Lake Union" and "Downtown," through extensive advertising, and press coverage, the trademark element "DOWNTOWN LAKEFRONT NEIGHBORHOOD" has come to be so closely associated with the developer Vulcan Real Estate that while the combined mark might call to mind the area of Lake Union in Seattle, it is directly linked in the minds of consumers to the services of Vulcan Real Estate. While the individual components of the mark might be geographically descriptive, the composite has become a distinguishing mark.

Further, the Applicant submits, that while "DOWNTOWN LAKEFRONT NEIGHBORHOOD" may consist of geographic terms, they are uniquely arranged to form a distinctive element. The Applicant is not familiar with any other use of this phrase in association with real estate development, sales and leasing services. A search on GOOGLE does not turn up any references to the phrase except the use by the Applicant. Applicant submits the composite mark SOUTH LAKE UNION SEATTLE'S LAKEFRONT NEIGHBORHOOD is entitled to protection as a trademark for these services though a disclaimer might be required for "LAKE UNION" and "SEATTLE."

The Applicant is attaching a substitute specimen which is a complete copy of the sales brochure submitted as the Applicant's original specimen. Page 10 of the brochure shows use of the mark (at the top of the page) in association with real estate development, sales and leasing services. A second specimen is also submitted showing use of the mark in connection with an online brochure describing the Applicant's real estate development and real estate leasing services.

We are hopeful this is responsive to all concerns raised in the Office Action dated June 19, 2007 and the application may proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Building construction and repair; Building demolition; Building inspection; Building maintenance and repair; Building of shops; Building restoration; Cleaning of building exterior surfaces; Cleaning of external surfaces of buildings; Construction and renovation of buildings; Construction and repair of buildings; Construction consultation; Construction management; Construction of residential and commercial mixed use communities; Construction services, namely, planning, laying out and custom construction of residential and commercial communities; Construction supervision; Construction, maintenance and renovation of property; Consultation in building construction supervision; Custom construction and building renovation; General construction contracting; House and building demolition; Land development services, namely, planning and laying out of residential and/or commercial communities; Land reclamation; Leasing of building machinery; Leasing of construction equipment; Marine construction; Pier construction; Planning and laying out of factory buildings; Planning and laying out of production facilities; Planning and laying out of residential communities; Real estate development; Real estate site selection; Remodeling of residential and commercial mixed use communities; Rental of construction equipment; Rental of construction machines and apparatus; Repair of buildings; Repair work on buildings; Residential and commercial building construction; Road construction
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/24/2004 and first used in commerce at least as early as 01/24/2004, and is now in use in such commerce.

Proposed: Class 037 for Building construction and repair; Building demolition; Building inspection; Building maintenance and repair; Building of shops; Building restoration; Cleaning of building exterior surfaces; Cleaning of external surfaces of buildings; Construction and renovation of buildings; Construction and repair of buildings; Construction consultation; Construction management; Construction of residential and commercial mixed use communities; Construction services, namely, planning, laying out and custom construction of residential and commercial communities; Construction supervision; Construction, maintenance and renovation of property; Consultation in building construction supervision; Custom construction and building renovation; General construction contracting; House and building demolition; Land development services, namely, planning and laying out of residential and/or commercial communities; Land reclamation; Leasing of building machinery; Leasing of construction equipment; Marine construction; Pier construction; Planning and laying out of factory buildings; Planning and laying out of production facilities; Planning and laying out of residential communities; Real estate development; Real estate site selection; Remodeling of residential and commercial mixed use communities; Rental of construction equipment; Rental of construction machines and apparatus; Repair of buildings; Repair work on buildings; Residential and commercial building construction; Road construction
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/24/2004 and first used in commerce at least as early as 01/24/2004, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 037. The specimen(s) submitted consists of The Applicant is attaching a substitute specimen which is a complete copy (10 pages) of the sales brochure submitted as the Applicant's original specimen . (Only the was submitted with the application). Page 10 of the brochure shows use of the mark (at the top of the page) in association with real estate development, sales and leasing services. A second specimen (attachment 11) is also submitted showing use of the mark in connection with an online brochure describing the Applicant's real estate development and real estate leasing services..
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11

SIGNATURE(S)
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: /Nancy V. Stephens/      Date: 12/19/2007
Signatory's Name: Nancy V. Stephens
Signatory's Position: Attorney

Response Signature
Signature: /Nancy V. Stephens/     Date: 12/19/2007
Signatory's Name: Nancy V. Stephens
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: 77116746
Internet Transmission Date: Wed Dec 19 20:18:42 EST 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200712192018429
08462-77116746-410821855b992c86825b7a2c1
f8706a14-N/A-N/A-20071219195534319607