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. 77430829 has been amended as follows:

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

The Examining Attorney has requested that the Application be amended by disclaiming rights to HAVAIANAS  claiming that the mark is descriptive of the goods in Class 18. Applicant disagrees.

A mark is considered merely descriptive if it describes ingredients, qualities, characteristics or features of goods or services or if it immediately conveys information regarding function, purpose, use or property of goods or services. In re Southern National Bank of North California, 219 U.S.P.Q. 1231 (TTAB 1983). The Examining Attorney must consider the way the mark is used in connection with the goods or services and the significance of the mark to the average purchaser. In re Tennis in the Round, Inc., 199 U.S.P.Q. 496 (TTAB 1978); In re Econoheat, Inc., 218 U.S.P.Q. 381 (TTAB 1983). A descriptive mark immediately and directly conveys information about the goods or services. A general association between the mark and the goods or services does not render a mark descriptive. Glamorene Products Corp. v. Boyle Midway Inc. et al, 188 U.S.P.Q. 145 (SDNY 1975). The same analysis applies with respect to a determination of descriptiveness of a foreign term. In re Atavio Inc., 1002 TTAB Lexis 56 (TTAB 1992).

Under the doctrine of foreign equivalents, foreign words are translated into English and then tested for descriptiveness. In re General Franchising Corp., 169 U.S.P.Q. 55 (TTAB 1971). Moreover, foreign words from obscure languages such as the "Taino Indians of the Dominican Republic" might be so unfamiliar to any segment of the American public that they should not be translated into English for descriptiveness purposes. See General Cigar Co. v. G.D.M. Inc., 45 U.S.P.Q.2d 1481 (SDNY 1997) ("the applicant had no obligation to disclose to the PTO that the mark COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the U.S. would not be aware of such meaning. "The association of linguist in the Taino language are not relevant in this determination".)

Here, the mark HAVIANAS has no meaning in connection with the goods.

The  Examining Attorney's refusal to register appears to be premised on the assertion that "HAVAIANAS means "HAWAIIAN" in Portuguese, and the word HAWAIIAN merely describes a style of bags, specifically a print or weave". It is highly unlikely that a consumer would go through the "mental gymnastics" involved, in determining that the definition of HAVAIANAS in Portuguese is "HAWAIIAN" and then, assume that HAWAIIAN suggest a style of a print for a bag. Thus, HAVAIANAS is not descriptive of Applicant's goods.

Moreover, a review of Wikipedia shows that, if the term HAVIANAS has a meaning, it may be defined as a type of "flip flop" worn in Brazil. There is no connection between the mark and its Portuguese translation. Accordingly, it would be unlikely that the American public would translate it accordingly.

In view of the above, it is maintained that no disclaimer is required.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Purses, backpacks, bags, necessaire, suitcases, wallets, multi-use compartment and briefcases
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Proposed: Class 018 for Purses, backpacks, namely beach, sports, messenger bags, suitcases, wallets, wallets with multi-use compartments and briefcases.
Filing Basis: Section 1(b), Intent to Use: 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)).

SIGNATURE(S)
Response Signature
Signature: /bloewenthal/     Date: 11/17/2008
Signatory's Name: Barbara Loewenthal
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: 77430829
Internet Transmission Date: Mon Nov 17 16:03:24 EST 2008
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20081117160324
943325-77430829-43085e7446b32e1036e33d2d
036f33c71-N/A-N/A-20081117155834583277