| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Input Field |
Entered |
| SERIAL NUMBER | 78854337 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| DATE OF NOTICE OF ABANDONMENT | 04/16/2007 |
| 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) | |
|
RESPONSE
Sir: This communication is in response to Office Action mailed September 18, 2006, in connection with the above-identified application. Please reconsider the application in view of the remarks set forth below. REMARKS Applicant acknowledges the requirement for a new specimen, and Applicant respectfully traverses the requirement. Specifically, the Examining Attorney states that the mark as depicted on the drawing does not agree with the mark as it appears on the several submitted specimens, asserting that “the specimen shows the mark as SUNJOY where an integral design element of a sun takes the place of the letter O.” Applicant respectfully submits that each of the seven submitted specimens show a composite mark including both the standard character mark SUNJOY and a sun design element which overlies the center of the letter O (in the case of each specimen, the blue letter O is clearly visible beneath the sun’s outwardly-extending “rays”). Thus, Applicant respectfully submits that the sun design element does not, in fact, “take the place of the letter O” in any of the submitted specimens but, rather, is merely superposed over the center of the letter O. Further, Applicant respectfully submits that the standard character mark SUNJOY of the composite mark shown in Applicant’s submitted specimens constitutes an element of the composite mark that is separately registerable, as it presents a separate and distinct commercial impression. It is well settled that an applicant may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression which thereby performs the trademark function of identifying the source of an applicant's goods and services and distinguishing those goods and services from those of others. See Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) and Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). While this application presents a slightly different set of facts from the typical “mutilation” case, in which a registration is usually sought for the design element alone of a composite mark, Applicant submits that the analysis is the same. Thus, the issue of whether the portion of the mark sought to be registered creates a separate and distinct commercial impression and, hence is not an impermissible mutilation of the mark as used, "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Id., 839 F.2d at 1829. Further, the question of whether the designation sought to be registered creates a separate and distinct commercial impression must be determined based on the specimens of use. Id., 839 F.2d at 1829. Simply stated, in this application, the superposed design element – a sun overlying the center “hole” of the letter O, with “rays” extending outwardly over the otherwise visible portions of the letter O – is simply not dominant. Rather, the word SUNJOY – which appears in a bold monochromatic (blue) font that is several times wider than the height/width of the sun design element and, in one of the specimens, is further outlined in black – predominates, In re Big Pig, Inc., 2006 WL 3341185, 81 U.S.P.Q.2d 1436 (TTAB 2006)(“the word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words and design element”). And the word SUNJOY in Applicant’s composite mark “would be the portion of the mark used by consumers in asking for applicant's goods,” In re Stehle USA, Inc., 2002 WL 1561467 (TTAB 2002)(standard character mark STEELE deemed to predominate over design element in composite mark). Finally, Applicant respectfully draws the attention of the Examining Attorney to the language of TMEP §807.12(d), which states: [I]n an application under §1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. The mere fact that
two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark
if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.
(Emphasis added.) In view of the foregoing, Applicant respectfully requests reconsideration of the requirement for new specimens, and the allowance of the application. Should the Examining Attorney feel a personal conversation would expedite the application, the Examining Attorney is invited to call the undersigned. |
|
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Hugo A. Delevie/ |
| SIGNATORY'S NAME | Hugo A. Delevie |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 04/23/2007 |
| RESPONSE SIGNATURE | /Hugo A. Delevie/ |
| SIGNATORY'S NAME | Hugo A. Delevie |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 04/23/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 23 21:58:11 EDT 2007 |
| TEAS STAMP | USPTO/POA-XX.XX.XXX.XXX-2 0070423215811629749-78854 337-3702de5f171aa31f38d58 bfa15542ae8-CC-1145-20070 423213110792414 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Application serial no. 78854337 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: | |
|
RESPONSE
Sir: This communication is in response to Office Action mailed September 18, 2006, in connection with the above-identified application. Please reconsider the application in view of the remarks set forth below. REMARKS Applicant acknowledges the requirement for a new specimen, and Applicant respectfully traverses the requirement. Specifically, the Examining Attorney states that the mark as depicted on the drawing does not agree with the mark as it appears on the several submitted specimens, asserting that “the specimen shows the mark as SUNJOY where an integral design element of a sun takes the place of the letter O.” Applicant respectfully submits that each of the seven submitted specimens show a composite mark including both the standard character mark SUNJOY and a sun design element which overlies the center of the letter O (in the case of each specimen, the blue letter O is clearly visible beneath the sun’s outwardly-extending “rays”). Thus, Applicant respectfully submits that the sun design element does not, in fact, “take the place of the letter O” in any of the submitted specimens but, rather, is merely superposed over the center of the letter O. Further, Applicant respectfully submits that the standard character mark SUNJOY of the composite mark shown in Applicant’s submitted specimens constitutes an element of the composite mark that is separately registerable, as it presents a separate and distinct commercial impression. It is well settled that an applicant may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression which thereby performs the trademark function of identifying the source of an applicant's goods and services and distinguishing those goods and services from those of others. See Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) and Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). While this application presents a slightly different set of facts from the typical “mutilation” case, in which a registration is usually sought for the design element alone of a composite mark, Applicant submits that the analysis is the same. Thus, the issue of whether the portion of the mark sought to be registered creates a separate and distinct commercial impression and, hence is not an impermissible mutilation of the mark as used, "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Id., 839 F.2d at 1829. Further, the question of whether the designation sought to be registered creates a separate and distinct commercial impression must be determined based on the specimens of use. Id., 839 F.2d at 1829. Simply stated, in this application, the superposed design element – a sun overlying the center “hole” of the letter O, with “rays” extending outwardly over the otherwise visible portions of the letter O – is simply not dominant. Rather, the word SUNJOY – which appears in a bold monochromatic (blue) font that is several times wider than the height/width of the sun design element and, in one of the specimens, is further outlined in black – predominates, In re Big Pig, Inc., 2006 WL 3341185, 81 U.S.P.Q.2d 1436 (TTAB 2006)(“the word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words and design element”). And the word SUNJOY in Applicant’s composite mark “would be the portion of the mark used by consumers in asking for applicant's goods,” In re Stehle USA, Inc., 2002 WL 1561467 (TTAB 2002)(standard character mark STEELE deemed to predominate over design element in composite mark). Finally, Applicant respectfully draws the attention of the Examining Attorney to the language of TMEP §807.12(d), which states: [I]n an application under §1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. The mere fact that
two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark
if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.
(Emphasis added.) In view of the foregoing, Applicant respectfully requests reconsideration of the requirement for new specimens, and the allowance of the application. Should the Examining Attorney feel a personal conversation would expedite the application, the Examining Attorney is invited to call the undersigned. |
|
| Fees | |
| Fee(s) in the amount of $100 is being submitted. | |
| 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: /Hugo A. Delevie/ Date: 04/23/2007 | |
| Signatory's Name: Hugo A. Delevie | |
| Signatory's Position: Attorney of record | |
| Petition/Response Signature | |
| Signature: /Hugo A. Delevie/ Date: 04/23/2007 | |
| Signatory's Name: Hugo A. Delevie | |
| Signatory's Position: Attorney of record | |
| 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. | |
| Serial Number: 78854337 | |
| Internet Transmission Date: Mon Apr 23 21:58:11 EDT 2007 | |
| TEAS Stamp: USPTO/POA-XX.XX.XXX.XXX-2007042321581162 9749-78854337-3702de5f171aa31f38d58bfa15 542ae8-CC-1145-20070423213110792414 |