Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

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. 78918611 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

       The Examining Attorney has refused registration in Class 24 pursuant to Trademark Act Section 2(d) on the grounds that there is a likelihood of confusion between Applicant's mark and the subject marks of Regs. Nos. 2441615 and 2592176 in the name of Burma-Bibas, Inc. (the "Cited Registrations").  Applicant respectfully disagrees with the Examining Attorney's Section 2(d) refusal and submits the following evidence and arguments in support of registration.

 

       1. Confusion is Not Likely Between Applicant's Mark And The Mark In The Cited Registration.

          (a)      Applicant's Goods And The Goods Offered Under

                    The Cited Registrations Do Not Overlap.

      

       The Examining Attorney has cited the '615 and '176 registrations for ARTHOUSE and ARTHOUSE & Design in connection with "neckties, shirts, jackets, sweaters, slacks, pants, swimwear, shorts, vests" in Int. Cl. 25 as a basis for refusal to register Applicant's mark in connection with "textiles and textile goods not included in other classes; cloth on the roll, bed linen, table linen, upholstery fabrics, wall hangings of textile" in Int. Cl. 24 under Section 2(d) of the Trademark Act.  In contrast, the Class 24 goods in the instant application clearly indicates that apparel goods are not included in the application ("textiles and textile goods not included in other classes;….").   

       The Cited Registrant is a designer menswear manufacturer that markets its goods through four high-end retail chains, namely, Saks Fifth Avenue, Nordstrom, Neiman Marcus, and Bloomingdale's.  The attached screenshot of the "www.burmabibas.com" web site contains the message "Visit us at these fine stores!" and the logo marks of the foregoing four retailers.  Based on the Cited Registrant's own web site, it is clear that the subject goods of the Cited Registrations are exclusively marketed to up-market consumers through four highly specific retail channels, and are otherwise not widely available.  Unlike the goods in the Cited Registrations, Applicant does not manufacture apparel goods of any type; rather, it manufactures its textile products primarily for use by the interior design trade.  Further, Applicant's goods are mainly sold through hardware and interior design outlets.  The goods are therefore unlikely to appear alongside the goods in the Cited Registrations.  In the rare instance in which the goods might appear in a department store, they would obviously be in different departments than the menswear goods identified in the Cited Registrations. 

       The Examining Attorney makes the argument that "[a]s clothing marks [sic] are made from textiles and cloth rolls, these goods are inherently related."  Applicant disagrees, since the goods at issue are not so closely related that the use of similar marks would result in confusion, mistake or deception.  See Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 228 U.S.P.Q. 364 (Fed. Cir. 1986) (no confusion between ROMANBURGER for prepared sandwiches and ROMAN MEAL for bread and hamburger buns, despite fact that bread and buns are an important part of a sandwich).  Apart from the obvious differences between interior design textiles and finished designer menswear, the differences in the respective marketing channels, and sophistication of the buyers in making purchasing decisions militate strongly against finding a likelihood of confusion.

          Applicant's and the Cited Registrant's customer universes comprise two non‑overlapping groups of sophisticated consumers who know what they are looking for.  None of Applicant's customers would be confused by a line of menswear bearing the ARTHOUSE mark; likewise, it is highly unlikely that the Cited Registrant's customers would confuse the name of interior design textiles with a clothing line of a designer menswear brand.   

 

 

       In light of the foregoing, Applicant respectfully submits that, because of the substantial dissimilarities between the respective goods, marketing channels and consumer universes in connection with Applicant and the Cited Registrant, consumer confusion is not likely.

 

CONCLUDING REMARKS

 

          With the above, and as the Examining Attorney's search of Office records failed to reveal any similar registered or pending marks which would bar registration under Trademark Act Section 2(d), it is believed that the application is in condition for publication.  Such action is respectfully requested.

Evidence
Evidence in the nature of Printout of Cited Registrant's web site "www.burmabibas.com" showing exclusive retail distribution through four high-end retailers. 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 016 for Printed publications relating to design; photographs; posters; printed reproductions of artistic works
Original Filing Basis: 1(b); and 44(e).
Proposed: Class 016 for Printed publications relating to design; photographs; posters; printed reproductions of artistic works
Filing Basis: 1(b); and 44(e).
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Community registration number 2781110 registered 06/30/2004 with a renewal date of __________ and an expiration date of 07/18/2012 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Original PDF file:
FRU0-6310711710-224840238_._arthouse.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 019 for Ceramic tiles
Original Filing Basis: 1(b); and 44(e).
Proposed: Class 019 for Ceramic tiles
Filing Basis: 1(b); and 44(e).
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Community registration number 2781110 registered 06/30/2004 with a renewal date of __________ and an expiration date of 07/18/2012 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Original PDF file:
FRU1-6310711710-224840238_._arthouse.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 020 for Furniture; cushions and pillows; jewellery boxes; cutlery boxes; coat hangers and coat-stands; figurines; wall plaques; picture frames; mirrors; baskets; boxes; clothes silks; curtain holders; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tiebacks; cushions, mouldings for picture frames; seashells and animal shells; picture frame brackets; decorative wall plaques; ornaments made of plaster
Original Filing Basis: 1(b); and 44(e).
Proposed: Class 020 for Furniture; cushions and pillows; jewelry boxes not of metal; cutlery boxes; coat hangers and coat-stands; figurines, namely, figurines of bone, ivory, plaster, plastic, wax, wood; wall plaques; picture frames; mirrors; baskets; boxes, namely, plastic boxes, non-metal boxes; curtain holders, namely curtain rings; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers; cushions, mouldings for picture frames; seashells and animal shells; picture frame brackets; decorative wall plaques; ornaments made of plaster
Filing Basis: 1(b); and 44(e).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 024 for Textiles and textile goods not included in other classes; cloth on the roll, bed linen, table linen, upholstery fabrics, wall hangings of textile
Original Filing Basis: 1(b); and 44(e).
Proposed: Class 024 for Curtain tiebacks of textile material; textile fabrics for the manufacture of clothing, textile fabrics for home and commercial use, textile tablecloths, textile used as a lining for clothing; cloth on the roll, namely, silk cloth, crepe cloth, woollen cloth, cotton cloth, cloth made of synthetic materials; bed linen, table linen, upholstery fabrics, wall hangings of textile
Filing Basis: 1(b); and 44(e).
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Community registration number 2781110 registered 06/30/2004 with a renewal date of __________ and an expiration date of 07/18/2012 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Original PDF file:
FRU3-6310711710-224840238_._arthouse.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 027 for Non-textile wall hangings, floor coverings; Wall hangings (non-textile), floor coverings
Original Filing Basis: 1(b); and 44(e).
Proposed: Class 027 for Non-textile wall hangings, floor coverings
Filing Basis: 1(b); and 44(e).
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Community registration number 2781110 registered 06/30/2004 with a renewal date of __________ and an expiration date of 07/18/2012 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Original PDF file:
FRU4-6310711710-224840238_._arthouse.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant hereby adds the following class of goods/services to the application:
New:
Class 021 for Cutlery holders; figurines, namely china, crystal, glass and porcelain figurines; baskets, namely, plant baskets, waste baskets, fitted picnic baskets.
Section 1(b), the applicant has 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. (15 U.S.C. Section 1051(b)).

Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.


Fees
Fee(s) in the amount of $325 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: /victor sapphire/      Date: 06/05/2007
Signatory's Name: Victor Sapphire
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /victor sapphire/     Date: 06/05/2007
Signatory's Name: Victor Sapphire
Signatory's Position: Attorney for Applicant

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.
        
RAM Sale Number: 3847
RAM Accounting Date: 06/06/2007
        
Serial Number: 78918611
Internet Transmission Date: Tue Jun 05 23:20:48 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2007060523204879
0685-78918611-370d2e860754afb79d3adef4c6
19fd6a5d-DA-3847-20070605224840238117