Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78518463 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

 

This responds to the Office Action dated June 28, 2005 ("Office Action") in connection with the above referenced application ("Application") that seeks federal registration of the above referenced mark ("Applicant's Mark"). 

REMARKS

 

I.          The services described in the Application

 

Please amend the description of the services falling under International Class 41 in the Application as follows (hereinafter "Applicant's Amended Services"):

 

            Centers for entertainment and amusement in the nature of movies, live music concerts, night  clubs, magic shows,  visual and audio performances,  musical and comedy shows,  live performances by musical bands, interactive plays,  amusement arcades, how to performances and demonstrations.

 

II.        Substitute specimen

 

Enclosed with this response is a substitute specimen of Applicant's Mark which identifies Applicant's Amended Services. The substitute specimen comprises two pages of Applicant's 27-page advertising  materials for Applicant's Amended Services under the mark LEGENDS plus design.  As explained in details below, these two pages in their relationship to each other demonstrate Applicant's use of the mark LEGENDS plus design as a source-identifier for Applicant's Amended Services.

 

The first page is the cover page of Applicant's advertising materials, and Applicant's Mark is prominently displayed on the upper left-hand corner of said page.  The phrase "ENTERTAINMENT DISTRICT" is placed in near proximity to the mark and various snapshots that vividly capture the essence of Applicant's Amended Services are featured on this page.   Such an essence is continuously captured in additional snapshots in the second page of the substitute specimen that corresponds to the last page of Applicant's advertising materials.  For example, Applicant's Mark is used to advertise entertainment and amusement in the nature of movies by placing Applicant's Mark side by side with the word CINEMA in the snapshot located in the lower left-hand corner of the second page of the substitute specimen.  Based on the foregoing, the substitute specimen amply demonstrates Applicant's use of the mark LEGENDS plus design as a source-identifier for Applicant's Amended Services.

 

 The above substitute specimen is accompanied by a signed declaration that verifies its use in connection with Applicant's Mark for Applicant's Amended Services at least as early as November 17, 2004 (the filing date of the Application).  If necessary, and upon the Examining Attorney's request, Applicant will be willing and ready to submit  the complete copy of its 27-page advertising material to supplement the two-page specimen (of which it is a part) presently submitted. 

 

III.       Analysis of a likelihood of confusion

 

The Examining Attorney refused registration of Applicant's Mark, contending that it was likely to cause confusion with respect to the registered mark, No. 2,530,759.  This cited mark is used for the services falling under International Class 41 and specifically related to entertainment in the nature of professional baseball games. 

Applicant respectfully traverses this refusal and requests reconsideration in view of the evidence and arguments set forth below.       

 

The Examining Attorney has based his/her conclusion of a likelihood of confusion on two factors: 1) similarity of the respective marks, and 2) similarity of services offered under the respective marks.  While these are important factors to consider, other factors that are enumerated  below should also be considered if relevant evidence is available.  TMEP §1207.01.   In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  For example, if the goods/services in questions are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.  See e.g., Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (T.T.A.B. 1990)(LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field).  Accordingly, Applicant presents additional evidence touching on these other factors, and suggests that this evidence supports a finding of no likelihood of confusion.

 

1)         Dissimilarity of the marks in their entireties as to appearance, and connotation.

 

Applicant's Mark is LEGENDS plus design.  The cited mark is LEGENDS without design.  That is, the design element that is present in Applicant's Mark is absent in the cited mark.  The word LEGENDS is accentuated by the design that depicts part of a wheat stalk.  This added pictorial design of Applicant's Mark is artistically unique.  Consequently, Applicant's Mark, in its entirety by including  its additional pictorial design, is visually dissimilar from the cited mark, and creates a commercial impression different from that created by the cited mark.

 

2)         Applicant's Amended Services identified by Applicant's Mark are distinguishable from those identified by the cited mark.

 

Applicant's Amended Services are now more precisely describe the market context under which it provides its services under Applicant's Mark.  Applicant's Amended Services literally do  not cover entertainment in the nature of professional baseball games.    Additionally, nowhere in the wording of Applicant's Amended Services does it connote any relatedness to entertainment in the nature of professional baseball games. 

 

3)         Applicant's Amended Services and those identified by the cited mark are offered to consumers under vastly different market circumstances.

 

The entertainment selections respectively provided under Applicant's Mark and the cited mark would appeal to different interests of entertainment.  On one hand, attending and watching a professional baseball game is the sole highlight at the premises associated with the cited mark.  On the other hand, attending and watching a professional while at the premises associated with Applicant's Mark, among many entertainment options offered there, is not an option.  As such, because Applicant's Amended Services are not appealing to those are interested in attending and watching a professional baseball game, consumers are unlikely to be confused, or to reach a mistaken conclusion that Applicant's Amended Services offered under the mark LEGENDS  plus design are somehow affiliated with those services identified by the cited mark. 

 

When considering the likelihood of confusion factors in light of the evidence provided herein, it can be seen that Applicant's Mark -- LEGENDS plus design -- in connection with Applicant's Amended Services should be registrable over the cited mark for its services.

 

 

IV.       Pending Application Serial No. 78/233,904

 

In this Office Action, the Examining Attorney brought to Applicant's attention the mark LEGENDS SQUARE  and the services associated with such a mark in the pending application, serial no. 78/233,904.  However, no formal refusal based on this application  was made, nor can be made until that application matures into a registration.  Accordingly, Applicant presently makes no comments regarding that application.  Nevertheless, Applicant reserves the right to address any future refusal, and to provide arguments in response thereto at the appropriate time.

 

CONCLUSION

 

It is therefore requested that the refusal to register be withdrawn, and the application be passed on for registration on the Principal Register.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Entertainment and amusement centers, and interactive play areas
Original Filing Basis: 1(a).
Proposed: Class 041 for Centers for entertainment and amusement in the nature of movies, live music concerts, night clubs, magic shows, visual and audio performances, musical and comedy shows, live performances by musical bands, interactive plays, amusement arcades, how to performances and demonstrations
Section 1(a), Use in Commerce: The mark was first used at least as early as 07/31/2003 and first used in commerce at least as early as 07/31/2003, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041.
The specimen(s) submitted consists of The cover page and last page of Applicant's 27-page advertising materials.

For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1
Specimen-2


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /ph/      Date: 12/22/2005
Signatory's Name: Pearl Hsieh
Signatory's Position: Attorney

Response Signature

Signature: /ph/     Date: 12/22/2005
Signatory's Name: Pearl Hsieh
Signatory's Position: Attorney
        
Serial Number: 78518463
Internet Transmission Date: Thu Dec 22 19:49:36 EST 2005
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20051222194936644
983-78518463-32022f589d94be899183b2da9b9
af3621-N/A-N/A-20051222194159461596