PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 77116746 |
LAW OFFICE ASSIGNED | LAW OFFICE 117 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
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. |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 037 |
DESCRIPTION | |
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) |
FIRST USE ANYWHERE DATE | At least as early as 01/24/2004 |
FIRST USE IN COMMERCE DATE | At least as early as 01/24/2004 |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 037 |
DESCRIPTION | |
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) |
FIRST USE ANYWHERE DATE | At least as early as 01/24/2004 |
FIRST USE IN COMMERCE DATE | At least as early as 01/24/2004 |
STATEMENT TYPE | "The substitute specimen(s) was in use in commerce as of the filing date of the application." |
SPECIMEN FILE NAME(S) |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0002.JP G |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0003.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0004.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0005.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0006.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0007.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0008.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0009.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0010.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0011.JP G | |
\\TICRS2\EXPORT14\771\167 \77116746\xml1\ROA0012.JP G | |
SPECIMEN DESCRIPTION | 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. |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Nancy V. Stephens/ |
SIGNATORY'S NAME | Nancy V. Stephens |
SIGNATORY'S POSITION | Attorney |
DATE SIGNED | 12/19/2007 |
RESPONSE SIGNATURE | /Nancy V. Stephens/ |
SIGNATORY'S NAME | Nancy V. Stephens |
SIGNATORY'S POSITION | Attorney |
DATE SIGNED | 12/19/2007 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Dec 19 20:18:42 EST 2007 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20071219201842908462-7711 6746-410821855b992c86825b 7a2c1f8706a14-N/A-N/A-200 71219195534319607 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
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.