Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85275794 CORI (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85275794) has been amended as follows:

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

The goods in the present application have been amended to specifically exclude jeans.

It is requested that the examiner reconsider and withdraw the rejection of this application based on a likelihood of confusion with the mark CORY for jeans in US Registration No. 3702942 .  As explained below, the application mark and the mark of the cited registration are different. Further, the subject matter of the ‘942 registration has been previously determined by the Trademark Office to not conflict with the subject matter of the present application.

It is submitted that there are sufficient differences between the marks to avoid any likelihood of confusion.  The CORY mark of the cited ‘942 registration is a recognized given name that is sometimes spelled COREY.  It is a female or male name of Germanic origin meaning God’s peace as indicated in the attached Exhibits 1 and 1A comprising printouts of a Google search for “cory”.

In contrast with this mark of the cited registration, CORI is not a recognized given name as indicated in the attached Exhibit 2 comprising a printout of a Google search for “cori”. Moreover, as indicated in the present application, CORI has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application. Further, the word of the mark has no geographical significance, and it does not have any meaning in a foreign language.  CORI is an arbitrary designation selected by applicant to identify the origin of his goods.

Further, the mark of the present application includes a design aspect formed by the use of capital letters C, O and R together with a lowercase letter -- i -- having the dot above the letter  - i - significantly spaced from the  lower portion of the letter.   This design aspect of the mark also distinguishes it from the mark of the cited registration.

Applicant is the owner of the mark, CORI.  This mark was the subject of US Registration number 2891483,  registered October 5, 2004, for hats, caps, visors, headbands, kerchiefs, headwear, suits, dresses, shirts, blouses, T-shirts, tops, sweaters, sweatshirts, sweatpants, jackets, coats, skirts, pants, shorts, tights, lingerie, underwear, scarves, ties, neckwear, rainwear, warm-up suits, swimsuits, shoes, sandals, slippers, boots, athletic footwear, stockings, gloves, belts.    The ‘483 registration was cancelled for failure to file an acceptable declaration under Section 8 between October 5, 2009 and October 5, 2010.  The foregoing is shown in the attached Exhibits 3 and 4 comprising copies of the Trademark Office records for the ‘483 registration .

Thus, the ‘483 registration was in force on July 22, 2008 when the application resulting in the cited ‘942 registration was filed. Specifically, Serial number 77–527,951 was filed on July 22, 2008 for the cited ‘942 registration. Application serial number 77–527,951 was allowed as filed and registered over applicant’s then valid ‘483 registration.  Accordingly, the Trademark Office position is that there is no likelihood of confusion between Applicant’s CORI mark for use with articles of clothing other than jeans and the cited CORY mark for use with jeans.

As noted above, the present application has been amended to specifically exclude jeans in order to assure the absence of conflicting jean products.  It is therefore requested that the refusal to register the present application be withdrawn in accordance with the past standard applied by the Trademark Office in connection with the identical marks and substantially corresponding products. 

The amendment of the application herein to exclude jeans assures that the owner of the ‘942 registration is not restricted by the registration of the present application. 

For all of the foregoing reasons, it is respectfully submitted that the refusal to register the present application be withdrawn.

EVIDENCE
Evidence in the nature of Exhibits 1 and 1A: Printouts of a Google search for cory; Exhibit 2: printout of a Google search for cori; Exhibits 3 and 4: printouts of the Trademark Office records for Registration No. 2891483. has been attached.
Original PDF file:
evi_216183169114-135511268_._Exhibit_1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_216183169114-135511268_._Exhibit_1A.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_216183169114-135511268_._Exhibit_2..pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_216183169114-135511268_._Exhibit_3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_216183169114-135511268_._Exhibit_4.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Female clothing, namely, pants, skirts, t-shirts, blouses, bermudas, dresses, suits, gloves, bags, shoes, boots, footwear, head wear, coats, pullovers, rain coats, shorts, shirts, finished textile linings for garments, waistcoats, under clothing, lingerie, pajamas, nightgowns, robes, socks, handkerchiefs, bathing suits, bikinis, beach trunks, belts
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Brazil registration number 823560155 registered 07/01/2008 with a renewal date of __________ and an expiration date of 07/01/2018 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Female clothing, namely, pants, skirts, t-shirts, blouses, bermudas, dresses, suits, gloves, bags, shoes, boots, footwear, head wear, coats, pullovers, rain coats, shorts, shirts, finished textile linings for garments, waistcoats, under clothing, lingerie, pajamas, nightgowns, robes, socks, handkerchiefs, bathing suits, bikinis, beach trunks, belts; Female clothing, namely, pants, skirts, t-shirts, blouses, bermudas, dresses, suits, gloves, bags, shoes, boots, footwear, head wear, coats, pullovers, rain coats, shorts, shirts, finished textile linings for garments, waistcoats, under clothing, lingerie, pajamas, nightgowns, robes, socks, handkerchiefs, bathing suits, bikinis, beach trunks, and belts, but excluding jeans.Class 025 for Female clothing, namely, pants, skirts, t-shirts, blouses, bermudas, dresses, suits, gloves, bags, shoes, boots, footwear, head wear, coats, pullovers, rain coats, shorts, shirts, finished textile linings for garments, waistcoats, under clothing, lingerie, pajamas, nightgowns, robes, socks, handkerchiefs, bathing suits, bikinis, beach trunks, and belts, but excluding jeans.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Brazil registration number 823560155 registered 07/01/2008 with a renewal date of __________ and an expiration date of 07/01/2018 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /joseph j corso/     Date: 12/29/2011
Signatory's Name: Joseph J. Corso
Signatory's Position: Attorney of record, Ohio Bar Member

Signatory's Phone Number: 216-579-1700

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: 85275794
Internet Transmission Date: Thu Dec 29 14:23:43 EST 2011
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20111229142343
968997-85275794-490f856152265b415f26e122
2e676ac433-N/A-N/A-20111229135511268468