PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 78964037 |
LAW OFFICE ASSIGNED | LAW OFFICE 105 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
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. |
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GOODS AND/OR SERVICES SECTION (006)(current) | |
INTERNATIONAL CLASS | 006 |
DESCRIPTION | luggage/travel locks, key-chains |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 1308328 |
FOREIGN FILING DATE | 07/10/2006 |
GOODS AND/OR SERVICES SECTION (006)(proposed) | |
INTERNATIONAL CLASS | 006 |
DESCRIPTION | |
Metal luggage and travel locks, metal key-chains; security money holders, namely, metal money boxes | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 1308328 |
FOREIGN APPLICATION COUNTRY | Canada |
FOREIGN FILING DATE | 07/10/2006 |
GOODS AND/OR SERVICES SECTION (009)(current) | |
INTERNATIONAL CLASS | 009 |
DESCRIPTION | |
voltage adaptors, converters, modem cords, sunglasses, eyeglasses, compact disc holders, cell-phone and iPod holders, camera cases | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (009)(proposed) | |
INTERNATIONAL CLASS | 009 |
DESCRIPTION | |
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) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (014)(current) | |
INTERNATIONAL CLASS | 014 |
DESCRIPTION | watches, clocks |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (014)(proposed) | |
INTERNATIONAL CLASS | 014 |
DESCRIPTION | watches, clocks, key chains of precious metal |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (018)(current) | |
INTERNATIONAL CLASS | 018 |
DESCRIPTION | |
Luggage, sport bags, backpacks, tote bags, passport wallets, wallets, cosmetic bags and toiletry cases for men and women, travel slippers, computer bags, umbrellas, handbags | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (018)(proposed) | |
INTERNATIONAL CLASS | 018 |
DESCRIPTION | |
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) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (025)(current) | |
INTERNATIONAL CLASS | 025 |
DESCRIPTION | |
underwear, pants, jackets, parkas, hats, scarves, security money holders | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (025)(proposed) | |
INTERNATIONAL CLASS | 025 |
DESCRIPTION | |
underwear, pants, jackets, parkas, hats, scarves, travel slippers, security money holders, namely, money belts | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
RESPONSE SIGNATURE | /M. Cohen/ |
SIGNATORY'S NAME | Markus Cohen, Q.C. |
SIGNATORY'S POSITION | Attorney of record |
DATE SIGNED | 07/14/2007 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Sat Jul 14 14:14:09 EDT 2007 |
TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20070714141409380167-7896 4037-38025b5769f4297208a8 e8714d56b551c9-N/A-N/A-20 070714133339849837 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
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.