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. 78825396 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:
With respect to the potentially conflicting pending applications cited by the Examining Attorney, Ser. Nos. 78727144, 78727151, and 78727155, all applications of a single Applicant, Artesian Capital Management (ACM), Applicant respectfully submits that the distinction between the combination of words, and particularly the services associated with each mark, make confusion unlikely.

First, with the exception of the '155 application, all of the ACM marks include the terms "Capital Management" and graphic elements, in contrast to Applicant's mark, which contains nothing similar. 

Second, the distinction of the services associated with Applicant's mark from those of ACM eliminate any likelihood of confusion.  Applicant's services are "commercial lending services" and securitization.  In contrast, ACM does not lend money but rather receives money for the specific purposes of "a private hedge fund" and offers investment management and advisor services—again, services unrelated to Applicant's large commercial lending services.  Further, confusion is unlikely because Applicant's customers and the market which Applicant operates in are highly specialized and sophisticated, involving large, high net worth commercial development companies. 

 

Given the above, Applicant respectfully requests that the Examining Attorney withdraw his above-referenced objection and allow Applicant’s application to proceed to publication.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 036 for commercial lending services; the sale and securitization of commercial loans
Original Filing Basis: 1(a).
Proposed: Class 036 for commercial lending services; the securitization of commercial loans
Filing Basis: 1(a).

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: /David G. Schelzel/      Date: 02/23/2007
Signatory's Name: David G. Schelzel
Signatory's Position: attorney

Response Signature
Signature: /David G. Schelzel/     Date: 02/23/2007
Signatory's Name: David G. Schelzel
Signatory's Position: attorney
        
Serial Number: 78825396
Internet Transmission Date: Fri Feb 23 17:48:28 EST 2007
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2007022317482899
3951-78825396-3602e27a41772d8f22f93f32bb
517c7649-N/A-N/A-20070223173924973828