Dear Assistant Commissioner:

            Applicant hereby responds to the office action dated August 20, 2004.  Applicant respectfully requests amendment of the application and respectfully disagrees with the refusal to register and submits arguments in favor of registration of the above-identified mark.  Applicant further requests reconsideration of the refusal to register.

ARGUMENT

Refusal to Register Under 15 U.S.C. § 1052(d)

            Applicant respectfully traverses and disagrees with the refusal to register the mark "VANILLA" under the Trademark Act Section 2(d), 15 U.S.C. § 1052(d) as being likely to cause confusion with U.S. Registration Number 1,973,361 and requests reconsideration of the entry of the refusal to register on such grounds.  U.S. Registration Number 1,973,361 is for the mark "PLAIN VANILLA" for use in connection with investment services in the field of mutual funds.  U.S. Registration Number 1,973,361 was registered on May 7, 1996 to a company called Flagship Financial, Inc.  With a registration date of May 7, 1996, an affidavit of continued use should have been filed no later than November 7, 2002.  The TEAS system shows that no such affidavit has been filed.  A Cancellation proceeding regarding this mark was instituted in 1996 and terminated in 1998.  In addition, a search of the Delaware Secretary of State database shows that the corporate name of "Flagship Financial, Inc." is available - giving rise to the presumption that the corporation owning the registration is no longer in operation.  If the owner of the registration is no longer operating, by definition, the trademark cannot be in use in commerce.  Thus, Applicant respectfully suggests that, since it appears that mark is not in use in commerce, the registration cannot be used as the subject of a likelihood of confusion rejection.

            The applied for mark "VANILLA" is used, in International Class 35, in connection with Business Services, namely accounting services, account auditing, administration of business payroll for others, billing, bookkeeping, business acquisition, merger consultation, business appraisals, business auditing, business consultation, business management, cost accounting, cost assessment services, economic forecasting and analysis, income tax consultation, income tax preparation, financial statement preparation and analysis for businesses.  The applied for mark "VANILLA", as amended above, is used, in International Class 36, in connection with "Financial Services, namely financial analysis and consultation, financial forecasting, management and planning, insurance administration, administration of employee benefit plans for others, and cash management services."

            Applicant presumes that the Examining Attorney is not rejecting Applicant's use of the mark "VANILLA" in International Class 35 since the services recited in IC 35 does not recite an investment component.   Applicant has not amended the recitation of services with respect to the services recited in International Class 35.  Applicant, thus, respectfully requests that the Examining Attorney pass the application with respect to the services recited for International Class 35 on to allowance. Applicant presumes that the Examining Attorney has only rejected Applicant's use of the mark "VANILLA" in International Class 36 since the services recited (as filed with the application and not as amended above) contained an investment component.

Applicant respectfully submits that the above amendment to the Applicant's services in International Class 36 makes moot the Examining Attorney's refusal to register Applicant's mark.   Applicant, therefore, respectfully requests allowance of the mark in both International Classes 35 and 36. 

Refusal to Register Under 15 U.S.C. § 1052(e)(1)

            The Examining Attorney has refused to register the Applicant's mark on the basis that the proposed mark is merely descriptive of the services.  Applicant respectfully traverses the Examining Attorney's refusal and respectfully requests that the Examining Attorney reconsider the refusal for the following reasons.

            The Examining Attorney posits that the term vanilla means a "simple option" as compared with "exotic options which have additional terms."  The beauty of the proposed mark, as applied to the description of goods and services, is that the particular services provided by the Applicant to his clients are anything but "simple options."  Indeed, the Applicant provides sophisticated and comprehensive advice on complex financial matters with lots of options for his clients.  Applicant invites the Examining Attorney to visit Applicant's website www.vanilla-accounting.com, which provides further evidence of the comprehensive and extensiveness of the services provided by Applicant.  Thus, Applicant respectfully submits that the mark Vanilla is, at best, merely suggestive of the Applicant's services - if not inherently distinctive.

Significance in Relevant Trade or Industry

            Applicant states that, to the extent of his knowledge, the term "Vanilla" has no particular relevance or meaning in the financial services industry.   

Likelihood of Confusion with Trademark Application Serial No. 78/310,699

            Applicant notes that Trademark Application, Serial No. 78/310,699 has been abandoned.  Applicant respectfully submits that the abandonment of the application obviates the Examining Attorney's concern regarding any likelihood of confusion.

Applicant does not believe that the instant amendment or arguments require the submission of any fee with this amendment and response.  Applicant believes that he has addressed all of the Examining Attorney's concerns, as set forth in the Office Action.  Applicant respectfully requests that the Examining Attorney remove all of the rejections contained in the Office Action and allow the application to pass to registration.