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. 85861687 CLEVELAND'S CASINO(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85861687) has been amended as follows:

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

To the Honorable Commissioner For Trademarks:

Applicant, through its attorney, hereby respectfully responds to the Office Action electronically mailed on June 12, 2013.

SEARCH OF OFFICE RECORDS

Applicant hereby acknowledges that the Examining Attorney has searched the Office’s database of registered and prior pending marks, but has found no conflicting mark(s) that would bar registration of the applied-for mark under Trademark Act Section 2(d).

GEOGRAPHICALLY DESCRIPTIVE REFUSAL

Registration of the mark CLEVELAND’S CASINO has been refused as it is alleged that the mark is geographically descriptive of the origin of Applicant’s services.   Applicant respectfully disagrees with the Office Action.  Applicant does not wish to seek registration on the Supplemental Register or to divide the present application.

            Applicant hereby submits a claim of acquired distinctiveness under Section 2(f) based on the exclusive and continuous use of the mark CLEVELAND’S CASINO in commerce on related services since at least as early as 1989.

With respect to the services for which Section 1(b) was claimed, Section 1212.09(a) of the TMEP specifically provides “. . . an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under Section 2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the Applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ.2d 1807 (Fed. Cir. 2001).”

            To establish that a mark in an intent-to-use application has acquired distinctiveness, the Applicant must show (1) the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce and (2) a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.

            The TMEP provides that Applicant can establish acquired distinctiveness by a prima facie showing of five years use of the same mark with related goods or services.  In this case, Applicant has been using the mark exclusively and continuously in connection with casino services, gambling services, horse racing services, and broadcasting horse racing services since at least as early as 1989.  Applicant submits that there is a significant relationship between the casino, gambling, horse racing, and broadcasting horse racing services with which the mark has acquired distinctiveness and the gambling and casino services recited in the present application for which the Section 1(b) intent-to-use filing basis was claimed.  Consequently, the previously acquired distinctiveness based on the exclusive and continuous use for at least 20 years will transfer to the intent-to-use services recited in the application upon use.

 Applicant previously  registered the mark CLEVELAND’S CASINO in Service Mark Application Serial No. 77/780,562.  This application was refused registration based on geographical descriptiveness.  The refusal was overcome in the application in view of Applicant’s reliance on acquired distinctiveness through Applicant’s exclusive and continuous use in commerce of the mark CLEVELAND’S CASINO with closely related goods for at least five (5) years preceding the date of the Section 2(f) claim.  Application Serial No. 77/780,562 issued as U.S. Registration No. 4,319,288 on April 16, 2013.

DISCLAIMER

The Examining Attorney has required disclaimer of the word “CASINO” apart from the mark shown in the present application.  Accordingly, Applicant submits the following disclaimer:

No claim is made to the exclusive right to use “CASINO” apart from the mark as shown.

OWNERSHIP CLAIM

Applicant is the owner of U.S. registration No. 4,319,288.

In view of the amendment and remarks set forth herein, Applicant respectfully requests that the present application be approved for publication and allowance.

Respectfully submitted,

Salvatore A. Sidoti

Attorney For Applicant

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CASINO apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 4319288.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 4319288.


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Salvatore A. Sidoti/      Date: 12/11/2013
Signatory's Name: Salvatore A. Sidoti
Signatory's Position: Attorney For Applicant
Signatory's Phone Number: 440.808.0011


Response Signature
Signature: /Salvatore A. Sidoti/     Date: 12/11/2013
Signatory's Name: Salvatore A. Sidoti
Signatory's Position: Attonrey For Applicant

Signatory's Phone Number: 440.808.0011

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: 85861687
Internet Transmission Date: Wed Dec 11 14:18:37 EST 2013
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20131211141837148
443-85861687-500305a3ebd8ec8ba5e453160f7
2d9610d27156a3bcf2aa56a8be2026aa74af15e7
-N/A-N/A-20131211140036213534