| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77398400 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 77/334,826 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
For its response to the Notice of Suspension, dated September 23, 2008, Applicant responds as follows: I. Amendment of Identification of Services Applicant amends it identification of services to read as follows: Class 36: private equity investment in real estate for private equity investors; management and operation of private equity funds for real estate investment; real estate ownership and management services, namely, the acquisition, sales, financing and leasing of real estate; real estate property management Class 37: Real estate development services II. REQUEST TO DIVIDE APPLICATION UNDER 37 CFR § 2.87 Applicant requests that the instant application be divided as follows: Please retain in the original application: Class 36: private equity investment in real estate for private equity investors; management and operation of private equity funds for real estate investment Please include in the new, divided application: Class 36: real estate ownership and management services, namely, the acquisition, sales, financing and leasing of real estate; real estate property management Class 37: real estate development services Kindly draw the corresponding fees of $500 from the deposit account of the undersigned, Account No. 502670.
III. Section 2(d) Refusal – Likelihood of Confusion/Potential Likelihood of Confusion The Examining Attorney has refused registration of Applicant’s mark AREA on the basis of a likelihood of confusion with Applied Real Estate Analysis, Inc.’s U.S. Registration Nos. 3,274,630 for the mark AREA (stylized) and 3,271,816 for the mark AREA, both for “consultation services in the field of public policy planning; consulting services in the field of real estate market analysis” (collectively, the “Cited Marks”). Additionally, the Examining Attorney indicates that there may be a likelihood of confusion with Applicant’s Mark and pending U.S. Application No. 77/334,826 for AREA PRO REALTY for “Real estate agencies; Real estate brokerage; Real estate consultancy; Real estate lending services; Mortgage lending” owned by Area Pro Realty Franchise, Inc. (the “Pending Mark”). Applicant believes its services, as amended, are sufficiently different from those provided under the Cited Marks and the Pending Mark such that consumers are not likely to be confused into believing that Applicant’s services and those sold under the Cited Marks and Pending Mark emanate from a single source.[1] Accordingly, Applicant respectfully submits that in light of Applicant’s amendment of services and its request to divide the instant application, the Examining Attorney should reconsider and withdraw the refusal. IV. Conclusion In view of the foregoing, Applicant respectfully requests that the refusal and potential refusal to register be withdrawn and that Application Serial No. 77/398,400 be approved for publication. [1] As indicated in Applicant’s Office action response dated August 29, 2008, Applicant believes that there was no likelihood of confusion between its mark and the Cited Marks and Pending Mark prior to the current amendment of services. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /lmw/ |
| SIGNATORY'S NAME | Lisa M. Willis |
| SIGNATORY'S POSITION | Attorney of record, NY bar member |
| DATE SIGNED | 10/22/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 22 12:18:14 EDT 2008 |
| TEAS STAMP | USPTO/RSI-XXX.XXX.XXX.XX- 20081022121814719696-7739 8400-4308bcecc8056f2d6d97 12e795f6694ee-N/A-N/A-200 81022121452937760 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
For its response to the Notice of Suspension, dated September 23, 2008, Applicant responds as follows:
I. Amendment of Identification of Services
Applicant amends it identification of services to read as follows:
Class 36: private equity investment in real estate for private equity investors; management and operation of private equity funds for real estate investment; real estate ownership and management services, namely, the acquisition, sales, financing and leasing of real estate; real estate property management
Class 37: Real estate development services
II. REQUEST TO DIVIDE APPLICATION UNDER 37 CFR § 2.87
Applicant requests that the instant application be divided as follows:
Please retain in the original application:
Class 36: private equity investment in real estate for private equity investors; management and operation of private equity funds for real estate investment
Please include in the new, divided application:
Class 36: real estate ownership and management services, namely, the acquisition, sales, financing and leasing of real estate; real estate property management
Class 37: real estate development services
Kindly draw the corresponding fees of $500 from the deposit account of the undersigned, Account No. 502670.
III. Section 2(d) Refusal – Likelihood of Confusion/Potential Likelihood of Confusion
The Examining Attorney has refused registration of Applicant’s mark AREA on the basis of a likelihood of confusion with Applied Real Estate Analysis, Inc.’s U.S. Registration Nos. 3,274,630 for the mark AREA (stylized) and 3,271,816 for the mark AREA, both for “consultation services in the field of public policy planning; consulting services in the field of real estate market analysis” (collectively, the “Cited Marks”). Additionally, the Examining Attorney indicates that there may be a likelihood of confusion with Applicant’s Mark and pending U.S. Application No. 77/334,826 for AREA PRO REALTY for “Real estate agencies; Real estate brokerage; Real estate consultancy; Real estate lending services; Mortgage lending” owned by Area Pro Realty Franchise, Inc. (the “Pending Mark”). Applicant believes its services, as amended, are sufficiently different from those provided under the Cited Marks and the Pending Mark such that consumers are not likely to be confused into believing that Applicant’s services and those sold under the Cited Marks and Pending Mark emanate from a single source.[1] Accordingly, Applicant respectfully submits that in light of Applicant’s amendment of services and its request to divide the instant application, the Examining Attorney should reconsider and withdraw the refusal.
IV. Conclusion
In view of the foregoing, Applicant respectfully requests that the refusal and potential refusal to register be withdrawn and that Application Serial No. 77/398,400 be approved for publication.
[1] As indicated in Applicant’s Office action response dated August 29, 2008, Applicant believes that there was no likelihood of confusion between its mark and the Cited Marks and Pending Mark prior to the current amendment of services.