| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Input Field |
Entered |
| SERIAL NUMBER | 78782014 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| DATE OF NOTICE OF ABANDONMENT | 10/19/2006 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examiner objected to registration under § 2(d), based upon Reg. Nos. 1432034, 2759221, 2522793, 3049785 and then pending application serial no. 78276728 (which has since registered as reg. no. 3075513) (collectively the "Cited Registrations"). Applicant respectfully submits that each of the Cited Registrations conveys such a different commercial impression as to eliminate any likelihood of confusion. For the Examiner’s convenience, a chart showing the Cited Registrations in their stylized forms (including relevant goods and filing dates) is attached. As can be seen, although all marks contain the term "skunk" all of the Cited Registrations have some additional term. Those additional terms vastly alter the commercial impression conveyed. Reg. No. 1432034 (JOHNNY SKUNK and logo) gives the impression of a (human) guitar-playing soldier or navel officer named Jonny Skunk. Reg. No. 2759221 (SKUNK WORKS) conjures up the image of the mysterious, top secret, CIA related operations of the equally mysterious Howard Hughes. Reg. No. 2522793 (SKUNK OPS stylized) similarly relates the image of Top Secret Ops (an intelligence term for operations) of the Hughes Skunk Works. Serial No. 78276728 [now Reg. No. 3075513] (SKUNK2 RACING stylized) indicates a racing vessel named Skunk2. Reg. No. 3049785 (SKUNK2 RACING and logo) similarly speaks of a racing vessel. Evidently the PTO agreed that the above marks conveyed vastly different commercial impressions: SKUNK WORKS was allowed over prior filed JOHNNY SKUNK: SKUNK OPS was allowed over prior filed SKUNK WORKS and JOHNNY SKUNK; and the two SKUNK2 RACING marks were allowed over all of the above previously filed marks. Applicant’s mark conveys a very different commercial impression: not that of a guitar player or CIA operation or boat race, but of a mephitis mephitis or that ill-odored animal we call a skunk. None of the Cited Registrations conveys that impression, and Applicant respectfully submits that there is no likelihood of confusion between the Cited Registrations and Applicant’s mark. The Examiner also requ3ested a more specific recitation of goods, which has been provided by the attached amendment. In that regard, since shoes and hats are not included, Applicant believes that its mark is not merely descriptive of shoes and hats made of skunk skin. For the above reasons, passage to publication is respectfully requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT2\IMAGEOUT2 \787\820\78782014\xml2\PO A0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | chart showing the Cited Registrations in their stylized form |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | clothing |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | |
| clothing, namely shirts, knit shirts, polo shirts, tee shirts, sweat shirts, hooded sweat shirts, and zippered sweat shirts | |
| FILING BASIS | Section 1(b) |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /clark gross/ |
| SIGNATORY'S NAME | Clark D. Gross |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 11/10/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Nov 10 18:18:23 EST 2006 |
| TEAS STAMP | USPTO/POA-XXX.XXX.XXX.XXX -20061110181823782902-787 82014-3507fc27045d890616d 4449bfe585f515-CC-2307-20 061110180544465207 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Application serial no. 78782014 is amended as follows: | |
| PETITION | |
| Petition Statement | |
| Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. | |
| RESPONSE TO OFFICE ACTION | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
The Examiner objected to registration under § 2(d), based upon Reg. Nos. 1432034, 2759221, 2522793, 3049785 and then pending application serial no. 78276728 (which has since registered as reg. no. 3075513) (collectively the "Cited Registrations"). Applicant respectfully submits that each of the Cited Registrations conveys such a different commercial impression as to eliminate any likelihood of confusion. For the Examiner’s convenience, a chart showing the Cited Registrations in their stylized forms (including relevant goods and filing dates) is attached. As can be seen, although all marks contain the term "skunk" all of the Cited Registrations have some additional term. Those additional terms vastly alter the commercial impression conveyed. Reg. No. 1432034 (JOHNNY SKUNK and logo) gives the impression of a (human) guitar-playing soldier or navel officer named Jonny Skunk. Reg. No. 2759221 (SKUNK WORKS) conjures up the image of the mysterious, top secret, CIA related operations of the equally mysterious Howard Hughes. Reg. No. 2522793 (SKUNK OPS stylized) similarly relates the image of Top Secret Ops (an intelligence term for operations) of the Hughes Skunk Works. Serial No. 78276728 [now Reg. No. 3075513] (SKUNK2 RACING stylized) indicates a racing vessel named Skunk2. Reg. No. 3049785 (SKUNK2 RACING and logo) similarly speaks of a racing vessel. Evidently the PTO agreed that the above marks conveyed vastly different commercial impressions: SKUNK WORKS was allowed over prior filed JOHNNY SKUNK: SKUNK OPS was allowed over prior filed SKUNK WORKS and JOHNNY SKUNK; and the two SKUNK2 RACING marks were allowed over all of the above previously filed marks. Applicant’s mark conveys a very different commercial impression: not that of a guitar player or CIA operation or boat race, but of a mephitis mephitis or that ill-odored animal we call a skunk. None of the Cited Registrations conveys that impression, and Applicant respectfully submits that there is no likelihood of confusion between the Cited Registrations and Applicant’s mark. The Examiner also requ3ested a more specific recitation of goods, which has been provided by the attached amendment. In that regard, since shoes and hats are not included, Applicant believes that its mark is not merely descriptive of shoes and hats made of skunk skin. For the above reasons, passage to publication is respectfully requested. |
|
| Evidence | |
| Evidence in the nature of chart showing the Cited Registrations in their stylized form has been attached. | |
| Evidence-1 | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 025 for clothing | |
| Original Filing Basis: 1(b). | |
| Proposed: Class 025 for clothing, namely shirts, knit shirts, polo shirts, tee shirts, sweat shirts, hooded sweat shirts, and zippered sweat shirts | |
| Fees | |
| Fee(s) in the amount of $100 is being submitted. | |
| 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. | |
| Petition/Response Signature | |
| Signature: /clark gross/ Date: 11/10/2006 | |
| Signatory's Name: Clark D. Gross | |
| Signatory's Position: Attorney for Applicant | |
| Serial Number: 78782014 | |
| Internet Transmission Date: Fri Nov 10 18:18:23 EST 2006 | |
| TEAS Stamp: USPTO/POA-XXX.XXX.XXX.XXX-20061110181823 782902-78782014-3507fc27045d890616d4449b fe585f515-CC-2307-20061110180544465207 |
