| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78080511 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant respectfully submits that the specimen of record is proper and shows use of "HEAVY HITTERS" as a service mark.
In support, Applicant respectfully directs the Examining Attorney's attention to the Board's decision in In re San Diego Regional Economic Development Corporation, Serial No. 78678729 (August 21, 2008) ("San Diego Regional"). The mark sought for registration was "AT C-LEVEL", the Board affirmed the Examining Attorney in view of the word "AT" appearing in the mark. However, on page 6 of the decision, the Board noted that one of the specimens used the phrase "San Diego at C-LEVEL". The Board indicated that consumers could view "C-LEVEL" in the phrase as making a separate commercial impression.
Similarly, in the sentence "The "Heavy Hitters" of Legal Advertising" apearing in Applicant's specimen, the wording Heavy Hitters is noticeably larger in size than the rest of the wording, is further highlighted or emphasized by appearing between quotes and the TM symbol is disposed right after the quote in the middle of the sentence. Thus, similar to the San Diego Regional decision, with all of this emphasis for the wording Heavy Hitters, it is readily apparent that the wording Heavy Hitters in the specimen creates a separate commercial impression and thus, the specimen of record should be considered properly showing use of Applicant's mark.
As further support, Applicant also notes the Board's decision in In Re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008). The mark sought for registration was CONTINUUM and the specimen of record showed the wording INDIA CONTINUUM FUND all in the same type size and font. Nonetheless, the Board found that word CONTINUUM creates a separate commercial impression, because the words INDIA and FUND do not indicate source. The Board found the facts to be most similar to the Board's decision in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), where the Board found that a specimen of use containing TRO6AI-TINEL-LOCK-RING supported use of the mark TINEL-LOCK. Similarly, in Applicant's specimen, the terms "The" and "of Legal Advertising" would not distinguish Applicant's services from others Therefore, it is again shown that the wording "Heavy Hitters" creates a separate commercial impression.
Consumers viewing the phrase "The "Heavy Hitters" of Legal Advertising" as used in Applicant's specimen would not view "The" or "of Legal Advertising" as source-identifying elements. Thus, although these words appear in Applicant's specimens, since they do not have trademark significance, the more prominent and emphasized wording Heavy Hitters for which Applicant seeks registration and which appears in the drawing of the application, shows that Applicant's specimen currently of record should be considered acceptable to show use of Applicant's mark.
Accordingly, favorable action is respectfully requested, passing Applicant's mark to registration. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Daniel S. Polley/ |
| SIGNATORY'S NAME | Daniel S. Polley |
| SIGNATORY'S POSITION | Attorney of record, Florida bar member |
| DATE SIGNED | 10/02/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Oct 02 12:01:56 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-200 91002120156439749-7808051 1-4608d4cdce3e935ca7a3ef4 e7aafb42236-N/A-N/A-20091 002113914041583 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Applicant respectfully submits that the specimen of record is proper and shows use of "HEAVY HITTERS" as a service mark.
In support, Applicant respectfully directs the Examining Attorney's attention to the Board's decision in In re San Diego Regional Economic Development Corporation, Serial No. 78678729 (August 21, 2008) ("San Diego Regional"). The mark sought for registration was "AT C-LEVEL", the Board affirmed the Examining Attorney in view of the word "AT" appearing in the mark. However, on page 6 of the decision, the Board noted that one of the specimens used the phrase "San Diego at C-LEVEL". The Board indicated that consumers could view "C-LEVEL" in the phrase as making a separate commercial impression.
Similarly, in the sentence "The "Heavy Hitters" of Legal Advertising" apearing in Applicant's specimen, the wording Heavy Hitters is noticeably larger in size than the rest of the wording, is further highlighted or emphasized by appearing between quotes and the TM symbol is disposed right after the quote in the middle of the sentence. Thus, similar to the San Diego Regional decision, with all of this emphasis for the wording Heavy Hitters, it is readily apparent that the wording Heavy Hitters in the specimen creates a separate commercial impression and thus, the specimen of record should be considered properly showing use of Applicant's mark.
As further support, Applicant also notes the Board's decision in In Re Hudson Fairfax Group LLC,
Serial No. 76662560 (November 21, 2008). The mark sought for registration was CONTINUUM and
the specimen of record showed the wording INDIA CONTINUUM FUND all in the same type size and font. Nonetheless, the Board found that word CONTINUUM creates a separate commercial impression, because the words INDIA and FUND do not indicate source. The Board found the facts to be most similar to the Board's decision in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), where the Board found that a specimen of use containing TRO6AI-TINEL-LOCK-RING supported use of the mark TINEL-LOCK. Similarly, in Applicant's specimen, the terms "The" and "of Legal Advertising" would not distinguish Applicant's services from others Therefore, it is again shown that the wording "Heavy Hitters" creates a separate commercial impression.
Consumers viewing the phrase "The "Heavy Hitters" of Legal Advertising" as used in Applicant's specimen would not view "The" or "of Legal Advertising" as source-identifying elements. Thus, although these words appear in Applicant's specimens, since they do not have trademark significance, the more prominent and emphasized wording Heavy Hitters for which Applicant seeks registration and which appears in the drawing of the application, shows that Applicant's specimen currently of record should be considered acceptable to show use of Applicant's mark.
Accordingly, favorable action is respectfully requested, passing Applicant's mark to registration.