Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88296559 CARLYLE(Standard Characters, see http://uspto.report/TM/88296559/mark.png) has been amended as follows:

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

Applicant thanks the Office for advising that the trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).

 

The Office refuses registration alleging that the specimen displays the mark as CARLYLE QUAINT, whereas the drawing filed with the application displays the mark as CARLYLE.  Applicant respectfully disagrees.  The term CARLYLE is used by Applicant in connection with multiple font families based on fonts originally designed by Paul Carlyle (deceased) for the Photo-Lettering foundry.  Applicant is the owner of all rights in the Photo-lettering portfolio.  See, e.g., U.S. TM Reg. Nos. 3,021,706; 4,359,154; 3,890,226; and 4,220,248 for PHOTO-LETTERING in standard characters and stylized form, in connection with multiple classes.  Applicant uses CARLYLE as a primary mark with multiple secondary marks, and therefore CARLYLE serves as an indicator of source separate and apart from the trailing name that refers to a specific group in the CARLYLE family.  Attached are additional specimens showing use of the mark in connection with fonts branded as CARLYLE EVENTIDE, CARLYLE MYSTIQUE and CARLYLE ROCCOCO in association with Applicant’s Photo-Lettering foundry.

 

For the foregoing reasons, applicant respectfully requests withdrawal of the refusal to register and approval of the application for publication.

EVIDENCE
Evidence in the nature of additional specimens showing use of the mark in connection with fonts branded as CARLYLE EVENTIDE, CARLYLE MYSTIQUE and CARLYLE ROCCOCO in association with Applicant's Photo-Lettering foundry. has been attached.
Original PDF file:
evi_216129152132-20190411081343609212_._Carlyle_Eventide.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_216129152132-20190411081343609212_._Carlyle_Mystique.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_216129152132-20190411081343609212_._Carlyle_Roccoco.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

SIGNATURE(S)
Response Signature
Signature: /RexADonnelly/     Date: 04/11/2019
Signatory's Name: Rex A. Donnelly
Signatory's Position: Attorney of Record, DE Bar Member

Signatory's Phone Number: (302) 778-3460

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 88296559
Internet Transmission Date: Fri Apr 12 09:14:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190412091400
172159-88296559-6205783399237c92a7cee805
b3ec5daf86c297992220934dcf6d4ac1042687cc
7-N/A-N/A-20190411081343609212