| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79037910 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Remarks
This response is in reply to the Office Action dated June 25, 2007. The Examining Attorney’s comments have been carefully considered.
Identification Of Goods
The Examining Attorney has objected to the identification of goods indicating that the current wording used to describe the goods needs clarification in several respects. Elsewhere in this electronic reply, Applicant has amended the identification of goods to conform to the requirements of the Examining Attorney. Applicant avers that the identification of goods is now sufficiently specific to be acceptable.
BULLDOG and Design Can Be Distinguished From THE BULLDOG SHOP
The Examining Attorney has refused registration of BULLDOG and Design having deemed certain of the goods in the International Class 03 portion of the application to be confusingly similar to U.S. Registration No. 2,675,862 for THE BULLDOG SHOP in the name of California State University, Fresno Athletic Corporation. The cited registration covers (generally) retail store services featuring a variety of university related products. Applicant respectfully requests reconsideration of the refusal to register the mark.
The Examining Attorney has argued that BULLDOG and Design is similar or identical to the dominant portion of Registrant’s mark, namely, BULLDOG, acknowledging that the wording “SHOP” is descriptive of the retail services of the Registrant. The Examining Attorney has also argued that the use of the wording “bull dog” for cosmetic and personal care items is arbitrary. The Examining Attorney then indicates that certain of Applicant’s goods are highly related to at least some of the retail services for which the Registrant has secured registration of THE BULLDOG SHOP. Applicant acknowledges the copious number of references identified by the Examining Attorney wherein existing registrations cover both the goods and retail services for those goods.
Applicant specifically challenges the conclusion of the Examining Attorney because of the highly specialized nature of the Registrant. Applicant notes that the Registrant is self-reported as an Internal Revenue Code Section 501 (c)(3) nonprofit corporation of the State of California, organized in 1982 for the purpose of promoting and assisting California State University, Fresno. The Registrant achieves this purpose through the funding and operation of an intercollegiate athletic program. Further, Applicant notes that the mascot of California State University, Fresno is a bulldog. Lastly, Applicant does not own any live registrations for any mark other than the cited registration.
Applicant avers that the vast majority of Registrant’s customers are current or former students, faculty, staff or others affiliated with the University. Certainly, one would anticipate that the Registrant might license a variety of sportswear and related products to enable individuals to show their affiliation and support of the University; however, it is entirely unlikely that any other products that might be sold by THE BULLDOG SHOP would have been manufactured or licensed by the Registrant. No one would expect that “face paint, hair mousse, cosmetics or temporary tattoos” retailed by the Registrant would also be made by it, particularly noting the special entity status of the Registrant. This point is further substantiated by the fact that Applicant is using a stylized design together with the words “Bull Dog” to identify the source of its products.
Accordingly, Applicant disagrees with the conclusion of the Examining Attorney that “Applicant’s and Registrant’s cosmetic and hair care products and retail store services featuring those goods are the kind that may emanate from a single source.” Conversely, the marks can be distinguished and are not confusingly similar. Therefore, Applicant requests that the refusal to register the mark pursuant to §2(d) of the Trademark Act be withdrawn.
In view of the forgoing, Applicant avers that this application is in condition for publication pursuant to §68(a) of the Trademark Act. An early action to that effect is earnestly solicited.
Respectfully submitted,
Attorney for Applicant /JMP/ J. Matthew Pritchard Registration No. 46,228 |
|
| GOODS AND/OR SERVICES SECTION (003)(current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| Toiletries; body deodorant, anti-perspirants, shower gel; body wash, facial cleanser, facial scrub; facial wash, hand wash, soaps; skincare preparations; body mist spray; spot sticks; moisturisers; body lotion, body moisturiser, facial moisturiser; shaving gel, shaving oil, shaving cream, shaving foam, shaving spritz, shaving soap, shaving stones; after-shave; after-shave gel, after-shave balm; hair removal preparations and creams, depilatory preparations, depilatory wax; hair care preparations; shampoo, conditioner, hair gel, hair wax, hair spritz, hairspray; perfumery; eau de toilette; essential oils; cosmetics; dentifrices; lip balm; moustache wax; cosmetic kits; sunscreen preparations | |
| GOODS AND/OR SERVICES SECTION (003)(proposed) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| Non-medicated toiletries; body deodorant, anti-perspirants, shower gel; body wash, facial cleanser, facial scrub; facial wash, hand wash, soaps; non-medicated skincare preparations; body mist spray; spot sticks, namely, non-medicated acne treatment preparations; skin moisturisers; body lotion, body moisturiser, facial moisturiser; shaving gel, shaving oil, shaving cream, shaving foam, shaving spritz, shaving soap, after-shave; after-shave gel, after-shave balm; hair removal preparations and creams, depilatory preparations, depilatory wax; hair care preparations; shampoo, conditioner, hair gel, hair wax, hair spritz, hairspray; perfumery; eau de toilette; essential oils; cosmetics; dentifrices; lip balm; moustache wax; cosmetic kits; sunscreen preparations | |
| GOODS AND/OR SERVICES SECTION (005)(current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Anti-bacterial and medicated face, hand and skin washes; medicated preparations for the face, hands and skin; abrasive fluids for dental use; abrasive materials for dental use (other than floss); abrasive media for dental purposes (other than floss); abrasive pads for dental use; abrasive paste for dental use; abrasive powder for dental use; abrasive substances for dental use (other than floss); abrasives (dental); adhesion promoters for dental use; adhesive cements for dental use; adhesive compositions and preparations for dental use; adhesives for affixing dental prosthesis; adhesives for dental use; anti-microbial, antiseptic and medical mouthwash preparations (gargles) for oral hygiene purposes; colouring reagents for revealing dental plaque; cotton for dental purposes; dental bonding material; dental health gum (medicated); dental rinses, medicated; tablets for dental use in indicating tartar on the teeth | |
| GOODS AND/OR SERVICES SECTION (005)(proposed) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Anti-bacterial and medicated face, hand and skin washes; medicated preparations for the face, hands and skin; abrasive fluids for dental use; abrasive materials for dental use other than floss; abrasive media for dental purposes other than floss; abrasive pads for dental use; abrasive paste for dental use; abrasive powder for dental use; abrasive substances for dental use other than floss; dental abrasives; adhesion promoters for dental use; adhesive cements for dental use; adhesive compositions and preparations for dental use; adhesives for affixing dental prosthesis; adhesives for dental use; anti-microbial, antiseptic and medical mouthwash preparations and gargles for oral hygiene purposes; colouring reagents for revealing dental plaque; cotton for dental purposes; dental bonding material; medicated dental health gum; medicated dental rinses; tablets for dental use in indicating tartar on the teeth | |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /JMP/ |
| SIGNATORY'S NAME | J. Matthew Pritchard, Reg. No. 46,228 |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 12/26/2007 |
| RESPONSE SIGNATURE | /JMP/ |
| SIGNATORY'S NAME | J. Matthew Pritchard, Reg. No. 46,228 |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 12/26/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 26 15:26:19 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0071226152619726696-79037 910-4103572b7a3987668e94d 4f2d12c1dd73c-N/A-N/A-200 71226152525017339 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Remarks
This response is in reply to the Office Action dated June 25, 2007. The Examining Attorney’s comments have been carefully considered.
Identification Of Goods
The Examining Attorney has objected to the identification of goods indicating that the current wording used to describe the goods needs clarification in several respects. Elsewhere in this electronic reply, Applicant has amended the identification of goods to conform to the requirements of the Examining Attorney. Applicant avers that the identification of goods is now sufficiently specific to be acceptable.
BULLDOG and Design Can Be Distinguished From THE BULLDOG SHOP
The Examining Attorney has refused registration of BULLDOG and Design having deemed certain of the goods in the International Class 03 portion of the application to be confusingly similar to U.S. Registration No. 2,675,862 for THE BULLDOG SHOP in the name of California State University, Fresno Athletic Corporation. The cited registration covers (generally) retail store services featuring a variety of university related products. Applicant respectfully requests reconsideration of the refusal to register the mark.
The Examining Attorney has argued that BULLDOG and Design is similar or identical to the dominant portion of Registrant’s mark, namely, BULLDOG, acknowledging that the wording “SHOP” is descriptive of the retail services of the Registrant. The Examining Attorney has also argued that the use of the wording “bull dog” for cosmetic and personal care items is arbitrary. The Examining Attorney then indicates that certain of Applicant’s goods are highly related to at least some of the retail services for which the Registrant has secured registration of THE BULLDOG SHOP. Applicant acknowledges the copious number of references identified by the Examining Attorney wherein existing registrations cover both the goods and retail services for those goods.
Applicant specifically challenges the conclusion of the Examining Attorney because of the highly specialized nature of the Registrant. Applicant notes that the Registrant is self-reported as an Internal Revenue Code Section 501 (c)(3) nonprofit corporation of the State of California, organized in 1982 for the purpose of promoting and assisting California State University, Fresno. The Registrant achieves this purpose through the funding and operation of an intercollegiate athletic program. Further, Applicant notes that the mascot of California State University, Fresno is a bulldog. Lastly, Applicant does not own any live registrations for any mark other than the cited registration.
Applicant avers that the vast majority of Registrant’s customers are current or former students, faculty, staff or others affiliated with the University. Certainly, one would anticipate that the Registrant might license a variety of sportswear and related products to enable individuals to show their affiliation and support of the University; however, it is entirely unlikely that any other products that might be sold by THE BULLDOG SHOP would have been manufactured or licensed by the Registrant. No one would expect that “face paint, hair mousse, cosmetics or temporary tattoos” retailed by the Registrant would also be made by it, particularly noting the special entity status of the Registrant. This point is further substantiated by the fact that Applicant is using a stylized design together with the words “Bull Dog” to identify the source of its products.
Accordingly, Applicant disagrees with the conclusion of the Examining Attorney that “Applicant’s and Registrant’s cosmetic and hair care products and retail store services featuring those goods are the kind that may emanate from a single source.” Conversely, the marks can be distinguished and are not confusingly similar. Therefore, Applicant requests that the refusal to register the mark pursuant to §2(d) of the Trademark Act be withdrawn.
In view of the forgoing, Applicant avers that this application is in condition for publication pursuant to §68(a) of the Trademark Act. An early action to that effect is earnestly solicited.
Respectfully submitted,
Attorney for Applicant
/JMP/
J. Matthew Pritchard
Registration No. 46,228