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. 78964037 has been amended as follows:

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

Response to Citation of 2,776,935

The applicant has grounds for a good faith belief that the cited mark is not being used in commerce in the United States, and no such use has occurred for some time. The applicant intends to commence and prosecute proceedings leading to cancelation of registration of the cited mark on these and other grounds as counsel may advise, and respectfully requests that further action on its pending application with reference to goods in Class 14 only be suspended pending the resolution of such intended proceedings.

Response to Citation of 1,467,470

The applicant submits that the dominant feature of the cited mark PRIORITY MALE is, in fact, the formative MALE and not the formative PRIORITY. The suggestion and commercial impression created appears intended to drive the viewing consumer to the conclusion that the "priority" of the message is the "male" gender. It suggests that the consumer ask the question: "What is the priority?", and the answer to the question--and, therefore, the dominant feature--is: MALE. Even though MALE is disclaimed by the registrant does not alter its dominance in the mind of the consumer, who has no knowledge of such disclaimer. It is the impression of the consumer, not that of the registrant or even the examiner, that should be paramount in the analysis. Once that point of view is permitted to prevail, the likelihood of confusion--it is respectfully submitted--evaporates. As the examiner has offered: "The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression ...." That general impression, it is submitted, will focus on the MALE element of the cited mark, rather than on the formative PRIORITY even though the latter element precedes the former in the cited mark.

Response to Citation of 2,365,270

The applicant repeats and relies upon the submissions in the next preceding section of this argument, with all changes of wording rendered necessary by the context.

Moreover, the word PUCK is a most unusual word to be conjoined with the word PRIORITY and is, at first blush, a jarring juxtaposition which must surprise the average consumer and create a lasting impression that transcends that in the appearance of PRIORITY standing by itself, as in the case of the applicant's mark

In addition, a closer examination of the associated goods reveals significant dissimilarities between them. "Document holders" are generally not sealable or closable as in the case, for example, of envelopes. "Copyholders" indicates that the companion goods--"document holders"--are the sorts of devices used by secretaries and assistants to view copy and documents when in the act of transcribing them by copy-typing or keying in data appearing on such copy and/or documents. "Wallets", on the other hand, are normally clasped or sealed and are for carrying on the person in pocket or otherwise, and not--as suggested by the goods in the cited registration--for office or non-personal use.

In sum, the applicant respectfully urges the examiner to reconsider the initial refusal and withdraw the same.

Potential Bar based on Application Serial No. 78962371

With all due respect, the objection based on the cited application is misconceived. The applicant's application includes goods in Class 018, not in Class 028. The cited application includes goods in Class 028, not Class 018. I submit that reference to this potential bar to registration should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for luggage/travel locks, key-chains
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [ __________ application number 1308328 filed 07/10/2006]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 006 for Metal luggage and travel locks, metal key-chains; security money holders, namely, metal money boxes
Filing Basis: Section 1(b), Intent to Use: 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)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1308328 filed 07/10/2006]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for voltage adaptors, converters, modem cords, sunglasses, eyeglasses, compact disc holders, cell-phone and iPod holders, camera cases
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 009 for Electric luggage and travel locks, voltage adaptors, converters, modem cords, sunglasses, eyeglasses, compact disc holders, cell-phone and mp3 player holders, camera cases, computer carrying cases
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for watches, clocks
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 014 for watches, clocks, key chains of precious metal
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Luggage, sport bags, backpacks, tote bags, passport wallets, wallets, cosmetic bags and toiletry cases for men and women, travel slippers, computer bags, umbrellas, handbags
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 018 for Luggage, sport bags, backpacks, tote bags, passport wallets, wallets, cosmetic bags and toiletry cases sold empty for men and women, umbrellas, handbags, leather key chains
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for underwear, pants, jackets, parkas, hats, scarves, security money holders
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 025 for underwear, pants, jackets, parkas, hats, scarves, travel slippers, security money holders, namely, money belts
Filing Basis: Section 1(b), Intent to Use: 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)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

SIGNATURE(S)
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.
Response Signature
Signature: /M. Cohen/     Date: 07/14/2007
Signatory's Name: Markus Cohen, Q.C.
Signatory's Position: Attorney of record

The signatory has confirmed that he/she is a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO’s Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and he/she is currently the applicant's Canadian attorney/agent, or an associate thereof; and that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 78964037
Internet Transmission Date: Sat Jul 14 14:14:09 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-200707141414093
80167-78964037-38025b5769f4297208a8e8714
d56b551c9-N/A-N/A-20070714133339849837