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. 78710365 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION

This reply is being submitted in response to the Office Action mailed March 21, 2006, the deadline for response thereto being September 21, 2006.

In the Office Action, the Examiner rejected registration of the mark on the grounds of likelihood of confusion with the mark “OP” in U.S. Registrations 1,639,594 and 2,748,118.  Both of these “OP” marks are registered for clothing and bags.  Registration was also refused on the basis of likelihood of confusion with the mark “Extremities” (Registration 2,908,885) as used for clothing.

Applicant respectfully submits that the mark at issue is registrable over the cited prior registrations.  Applicant’s mark is used in connection with its sponsorship of athletic events for amputees and other persons having disabilities associated with their limbs.  The purpose of these games is to demonstrate that such persons are capable of participating in vigorous athletic activities, and thus raising public awareness of the abilities and capabilities of such persons.  The owner of the mark, College Park Industries, is recognized as a supplier of high quality, high performance prosthetic devices.  It is notable that the mark in question includes the name “College Park,” since that name is widely recognized by persons who would be interested in, and participate in, the games which are the subject of this application.  The term “Extremity Games” is a play on words which refers to the fact that the games fall in the broad genre of “extreme” sports and furthermore that they involve persons having disabilities associated with their extremities.  The mark further includes the lettering “O&P,” which is understood in the relevant market to refer to “orthotics and prosthetics.”  It is also notable that the mark in question includes a significant design element of a cartoon humanoid having a shortened leg.

Overall, the mark creates a very distinct impression and invokes an association with both the reputation of the Applicant as well as with the nature of the subject games.  The marks cited by the Examiner, in contrast, do not create the same overall impression.  While it is true that the present mark does include the element “O&P” and the cited ‘594 and ‘118 registrations are for the letters “OP”, no confusion is likely.  First of all, the present application uses the designation “O&P” which, as mentioned above, refers to orthotics and prosthetics.  Furthermore, the relevant lettering is used in combination with other significant elements in the mark, namely the cartoon character, the designation “Extremity Games” and the name “College Park.”  The “O&P” portion of the present mark is not only different from the “OP” of the cited registrations, it is in no way the dominant portion of the present mark.  In making this rejection, the Examiner is dissecting the present mark, focusing on a small portion, and neglecting other significant elements.  In considering likelihood of confusion, the Examiner must look to the mark as a whole; and when such is done, no confusion is likely.

The second basis for the rejections was with regard to the 2,908,885 registration for the mark “Extremities” as used in connection with the sale of cold weather clothing.  Again, Applicant draws the Examiner’s attention to the fact that the present mark is made up of a number of very distinct elements, all of which have particular meaning to the relevant consuming public, namely athletes with limb losses or limb differences.  In making the present rejection, the Examiner is, as noted above, dissecting the mark and formulating the rejection based upon alleged similarities between one very small portion of the present mark and a prior registration.

In summary, Applicant respectfully submits that there is no likelihood of confusion between the cited registrations and the mark which is the subject of the present application.  First of all, the marks are very different.  The present mark includes significant design elements as well as particular wording.  The present mark is used in connection with the operation and promotion of sporting events for athletes with limb loss or limb differences.  The cited marks, in contrast, are word marks comprising merely “OP” and “Extremities” all used in connection with the sale of clothing to the general public.  The overall impression of the marks is very different.  Furthermore, the relevant market for the goods and services used in connection with the various marks is very different.  The relevant group of consumers for Applicant’s goods and services is highly sophisticated and knowledgeable with regard to the meaning of the term “O&P” as well as the identity of the supplier of the goods and services, namely College Park, and would not at all be confused so as to believe that the sporting events were sponsored by the owners of the cited marks.  Likewise, the general public, which is the relevant consumer group for the goods of the cited marks, would not expect that the owners of those cited marks would be engaged in the business of sponsoring sporting events for handicapped athletes.  In view of the foregoing, Applicant respectfully requests that the Examiner reconsider and withdraw this rejection.

With regard to the identification of goods, the Examiner has suggested that Applicant adopt the following identification of goods:  “athletic bags, gym bags, sports bags in Class 18; shirts, shorts, jackets, hats and shoes in Class 25.”  Applicant agrees to amend the application to adopt the Examiner’s suggested wording.

The Examiner further has requested, with regard to the services in Class 41, that Applicant amend the application to include the types of sports.  Applicant suggests that an accurate description of the services would be “organizing and conducting athletic competitions and events for athletes living with limb loss or limb difference” and Applicant hereby so amends the application.

The Examiner has required that the Applicant disclaim the descriptive word “Games” apart from the mark as shown.  In that regard, Applicant hereby submits the following disclaimer:

No claim is made to the exclusive right to use GAMES apart from the mark as shown.

In view of the foregoing, Applicant respectfully submits that all issues raised in the Office Action are addressed.  The mark is in condition for publication.  Should the Examiner have any questions, comments or suggestions, she is respectfully requested to contact the undersigned attorney.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Organizing and conducting athletic competitions and events
Original Filing Basis: 1(b).
Proposed: Class 041 for Organizing and conducting athletic competitions and events for athletes living with limb loss or limb difference
Filing Basis: 1(b).
Correspondence Address Change
Applicant proposes to amend the following:
Original: JOHN P. SEURYNCK HOWARD & HOWARD ATTORNEYS P.C. 39400 WOODWARD AVE., SUITE 101 BLOOMFIELD HILLS, MI 48304-5151
Proposed: Ronald W. Citkowski of Gifford, Krass, Groh, Sprinkle, Anderson, having an address of P.O. Box 7021 2701 Troy Center Drive Troy, Michigan United States 48007-7021, whose phone number is 248-647-6000 and whose fax number is 248-647-5210.
Additional Statements

"No claim is made to the exclusive right to use GAMES apart from the mark as shown."

Power of Attorney and Revocation of Previous Power of Attorney is attached
Micellaneous File1

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: /RWC/      Date: 09/21/2006
Signatory's Name: Ronald W. Citkowski
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /RWC/     Date: 09/21/2006
Signatory's Name: Ronald W. Citkowski
Signatory's Position: Attorney for Applicant
Mailing Address:    Ronald W. Citkowski
   Gifford, Krass, Groh, Sprinkle, Anderson
   P.O. Box 7021
   2701 Troy Center Drive
   Troy, Michigan 48007-7021
        
Serial Number: 78710365
Internet Transmission Date: Thu Sep 21 13:43:13 EDT 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20060921134313
812274-78710365-3403022d6437d7376d36ddca
89273da41b-N/A-N/A-20060921131615190036