Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77517112 has been amended as follows:

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

The Examining Attorney has refused registration on the grounds that the mark is likely to be confused with the previously registered mark in U.S. Reg. No. 3,292,860.  For the reasons set forth below, Applicant respectfully requests reconsideration and withdrawal of the initial refusal.

Applicant notes that there are numerous previously registered marks containing the term PARADISE in connection with clothing in International Class 25, including PARADISE COALITION (U.S. Reg. No. 3,292,164); PARADISE BAY (3,004,216); PARADISE BLUE (U.S. Reg. No. 3,058,254); CAMP PARADISE (U.S. Reg. No. 2,768,241); SUPER PARADISE (U.S. Reg. No. 2,738,576); PURE PARADISE (U.S. Reg. No. 3,352,852), and many others.  This indicates that the term PARADISE is extremely weak and entitled to a very narrow scope of protection.  Indeed, many of these marks are distinguishable from each other only through the addition of weak and/or descriptive terms such as SUPER, COLLECTION, and PURE.
 
Applicant submits that its PARADISO (Stylized) mark is distinguishable from the previously registered PARADISE COLLECTION mark in U.S. Reg. No. 3,292,860, due to the following factors: i) the fact that the word element in Applicant's mark is PARADISO rather than PARADISE; ii) the stylization of Applicant's mark; and iii) the fact that the cited mark contains the additional term collection.
 
First, the Examining Attorney argues that under the doctrine of foreign equivalents, the term PARADISO is deemed to have the same meaning as the term PARADISE.  However, this doctrine only goes to the similarities in meaning, not the similarities in appearance and pronunciation.  The terms PARADISE and PARADISO are significantly different in pronunciation to be distinguishable, particularly in light of the extremely weak nature of "paradise."
 
In addition, the stylization of Applicant's mark further serves to distinguish it from the term PARADISE in the cited PARADISE COLLECTION mark.  The Examining Attorney has argued that the stylization of Applicant's mark is not distinctive enough to distinguish it from the word PARADISE; however, Applicant respectfully submits that the stylization is enough in this case due to the extremely weak nature of the mark, as demonstrated above.
 
Finally, Applicant's mark is missing the additional term COLLECTION, found in the cited registration.  Although the general rule is that the addition or deletion of material from a previously registered mark is not sufficient to avoid a likelihood of confusion, there is an exception to this rule  the matter common to the marks is extremely weak and diluted.  TMEP § 1207.01(b)(iii); see also In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items).
  
Therefore, Applicant respectfully argues that the marks PARADISO (Stylized) and PARADISE COLLECTION are not likely to be confused and requests that the Examining Attorney withdraw the Section 2(d) citation.


CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Bags and the like; pouches and the like; umbrellas/parasols
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2008-045689 filed 06/11/2008]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: [Bags and the like]; Pouches made of fabric, felt, imitation leather, or imitation fur; [pouches and the like]; briefcases; [umbrellas/parasols]; suitcases; all purpose sport bags; bags and holdalls for sports clothing; Boston bags; clutch bags; duffle bags; umbrellas; parasolsClass 018 for Pouches made of fabric, felt, imitation leather, or imitation fur; briefcases; suitcases; all purpose sport bags; bags and holdalls for sports clothing; Boston bags; clutch bags; duffle bags; umbrellas; parasols
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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2008-045689 filed 06/11/2008]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing (not including nightwear and the like); garters; sock suspenders; trouser straps; waistbands; belts; footwear; clothes for sports; boots for sports
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)).

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: [Clothing (not including nightwear and the like)]; Clothing, namely, anoraks, jerseys, pants, leotards, tights, wristbands, and caps for men and women; [garters]; socks; [sock suspenders]; sporting and gymnastic shoes, namely, golf shoes; [trouser straps]; [waistbands]; [belts]; [footwear]; [clothes for sports]; [boots for sports]Class 025 for Clothing, namely, anoraks, jerseys, pants, leotards, tights, wristbands, and caps for men and women; socks; sporting and gymnastic shoes, namely, golf shoes
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)).

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Sports equipment
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)).

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Sports equipment, namely, golf club bags, golf club bag covers, golf bag tags and golf equipment and accessories, namely, golf accessory pouchesClass 028 for Sports equipment, namely, golf club bags, golf club bag covers, golf bag tags and golf equipment and accessories, namely, golf accessory pouches
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)).

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the term PARADISE in stylized form.

Translation
The English translation of PARADISO in the mark is PARADISE.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Bryce J. Maynard/     Date: 02/16/2009
Signatory's Name: Bryce J. Maynard
Signatory's Position: Attorney for Applicant

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: 77517112
Internet Transmission Date: Mon Feb 16 16:23:13 EST 2009
TEAS Stamp: USPTO/ROA-XX.X.XXX.XXX-20090216162313786
785-77517112-440593281de4cd5e29a788a63d9
f7228ab-N/A-N/A-20090216160606562237