TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

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PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 78833514 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

            In the Office Action dated January 8, 2010, the Examining Attorney has maintained a refusal under Trademark Act Section 2(e)(1) to register the applied for mark, ORANGE, on grounds that it is merely descriptive.  In the Action the Examining Attorney has suggested that the application be amended to seek registration under Trademark Act Section 2(f) on grounds of the applied for mark having acquired distinctiveness as an indicator of source.  In so suggesting, the Examining Attorney has indicated merely relying on 5 years of continuous use may not be sufficient, but that additional evidence of acquired distinctiveness, such as specific dollar sales under the mark, advertising figures, consumer or dealer statements indicting the distinctiveness of the mark as an indicator of source, affidavits, and the like would be necessary.

            In responding to the Office Action, Applicant has amended the application to seek registration under Section 2(f).  In so doing, the Applicant has verified that ht it has used the mark continuously for at least the past 5 consecutive years.  Further, submitted with this response is an affidavit of Marc Donabella, the Licensing Administrator at Syracuse University’s office of Trademark Licensing, which includes numerous exhibits from various licensees of Syracuse University indicting that ORANGE is unquestionably an indicator of source (of Syracuse University) as the customers buy goods bearing the ORANGE mark not because the goods are (or are not) orange in color, but because it is the name of Syracuse University’s sports teams and the consumers want to show support of and affiliation with Syracuse University.  Also accompanying Mr. Donabella’s affidavit is an exhibit showing that hundreds of thousands of dollars worth of sales of ORANGE branded clothing have occurred at the Syracuse University bookstore since 2004.  Notably, the Syracuse University bookstore is merely one outlet in which the ORANGE branded clothing are sold; such clothing is also sold in retail outlets (brick and mortar and web-based) selling collegiate clothing throughout the country.

            In addition to Mr. Donabella’s affidavit and accompanying exhibits, an affidavit of Michael Drucker, the Vice President and Associate General Counsel at The Collegiate Licensing Company (“CLC”), is submitted herewith.  Mr. Drucker attests that he is familiar with the present application and refusal to register based on the mark being deemed merely descriptive.  CLC is the exclusive licensing agent for Syracuse University marks, and Mr. Drucker indicates that the ORANGE mark is a well know designator to the consuming public of Syracuse University.  Mr. Drucker further attests that since 2004, CLC has collected more than $5 Million dollars in licensing fees from Syracuse University licensees, including licensees of the applicant’s ORANGE mark.  Considering the licensing fees are a mere fraction of the revenue generated through the sale of the licensed goods, Syracuse University’s marks have generated an incredible amount of sales since 2004.  Further statements supporting Syracuse University’s claims of distinctiveness are made in Mr. Drucker’s and Mr. Donabella’s affidavits.

            In view of the amendment seeking registration under Section 2(f), the foregoing remarks, and the

supporting affidavits and exhibits, the Examining Attorney’s reconsideration and allowance of the present

application is respectfully requested.

EVIDENCE
Evidence in the nature of (1) Affdavit of Marc Donabella with accompanying Exhibits 1 - 7 (2) Affidavit of Michael Drucker has been attached.
Original PDF file:
evi_208698518-104044430_._Donabella_Dec_With_Exhibits.pdf
Converted PDF file(s) (22 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Original PDF file:
evi_208698518-104044430_._Drucker-affidavit.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

ADDITIONAL STATEMENTS
Section 2(f), based on Evidence
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.
Original PDF file:
e2f-208698518-104044430_._Donabella_Dec_With_Exhibits.pdf
Converted PDF file(s) (22 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15
2(f) evidence-16
2(f) evidence-17
2(f) evidence-18
2(f) evidence-19
2(f) evidence-20
2(f) evidence-21
2(f) evidence-22
Original PDF file:
e2f-208698518-104044430_._Drucker-affidavit.pdf
Converted PDF file(s) (2 pages)
2(f) evidence-1
2(f) evidence-2

Section 2(f), based on Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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. Section1001, 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. Section1051(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: /George R. McGuire/      Date: 07/08/2010
Signatory's Name: George R. McGuire
Signatory's Position: Applicant's Attorney

Request for Reconsideration Signature
Signature: /George R. McGuire/     Date: 07/08/2010
Signatory's Name: George R. McGuire/
Signatory's Position: Applicant's Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 78833514
Internet Transmission Date: Thu Jul 08 10:47:19 EDT 2010
TEAS Stamp: USPTO/RFR-XXX.XX.XX.XX-20100708104719846
463-78833514-4607a3212486cc129f5b5c62ff9
c56faeab-N/A-N/A-20100708104044430542