Docket No.: 1011-TM-1139
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE EXAMINER OF TRADEMARKS
`
`Mark:
`
`LOCMAN ITALY STEALTH
`
`Serial:
`
`77/801,258
`
`Filed:
`
`August 10, 2009
`
`Class(es):
`
`14
`
`Applicant:
`
`LOCMAN S.P.A.
`
`Law Office:
`
`112
`
`Examiner:
`
`Darryl M. Spruill, Esq.
`
`New York, NY 10020
`May 18, 2010
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`AMENDMENT
`
`This Amendment is being filed in response to the Office Action that was mailed
`
`November 18, 2009. Kindly amend the subject application as follows:
`
`IN THE IDENTIFICATION OF GOODS
`
`Please amend the identification of goods and services in International Class(es) 14 to read
`
`as follows:
`
`Illllllllillllllllllllllllllllllllllllllllllllllll
`05-24-2010
`ix TMDF:/TM 115111 R611‘. UL. 3313
`
`U E. =4.-.l.:r.'.
`
`

`

`77/801,258
`Law Office 112
`
`Darryl M. Spruill, Esq.
`
`Watches; chronometers; pendulum clocks; wrist watches; table clocks; pocket watches; alarm-
`clocks; cases and other containers for watches; watch straps in International Class 14.
`
`CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS:
`
`Please insert the following claim:
`
`Applicant is the owner of U.S. Registration Nos. 1,725,464, 2,708,578, 2,894,070, and
`3,046,331.
`
`DISCLAIMER
`
`Please insert the following disclaimer:
`
`No claim is made to the exclusive right to use “ITALY” apart from the mark as shown.
`
`REMARKS
`
`Based on the above amendments and these remarks, Applicant requests that the Examiner
`
`reconsider the application, withdraw all objections and allow the application to proceed to
`
`publication.
`
`Applicant has reviewed the Examiner’s suggestions with regard to the identification of
`
`goods and services and amended the recitation of goods and services in International Class(es)
`
`14. Therefore, reconsideration is requested on the issue of the identification.
`
`

`

`77/801,258
`Law Office 112
`
`Darryl M. Spruill, Esq.
`
`Applicant has inserted the requested claim of ownership of prior registrations and
`
`disclaimed the term ITALY. Therefore, reconsideration is requested on these issues.
`
`Applicant will proceed under Section 44(d) and will provide a Certified Copy of the
`
`Foreign registration when available.
`
`SECTION zgdg REFUSAL :
`
`The Examiner has refused registration of the applicant’s trademark citing U.S. Registration No.
`
`1,711,555 for STEALTH.
`
`As set forth in the application, Applicant has filed for registration of the mark LOCMAN
`
`ITALY STEALTH, for use on watches; chronometers; pendulum clocks; wrist watches; table
`
`clocks; pocket watches; alarm-clocks; cases and other containers for watches; watch straps in
`
`International Class 14.
`
`The cited registration offers a distinct commercial impression from the instant application
`
`and the Applicant respectfully states that the differences in marks alone are sufficient to obviate
`
`any possible confusion. Therefore, allowance is proper.
`
`Applicant does not dispute that the issue of likelihood of confusion, for registration
`
`purposes, is determined by evaluating the factors established in In re E.I. du Pom‘ DeNem0urs &
`
`C0., 476 F. 2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). The significance of each factor is
`
`determined on the particular circumstances of each case. G.H. Mumm & Cie v. Desnoes &
`
`Geddes, Ltd., 917 F.2d 1292, 1295, 16 USPQ2d 1635, 1637 (Fed. Cir. 1990). Applicant does
`
`offer that the most important du Pont factor in the instant matter is the similarity or dissimilarity
`
`of the marks in their entireties as to appearance, sound, connotation and commercial impression.
`
`

`

`77/801,258
`Law Office 112
`
`Darryl M. Spruill, Esq.
`
`When this factor is considered and applied to the present application, it is clear that there
`
`is no likelihood of confusion between the Applicant's mark and the cited registration.
`
`When assessing the similarities of two marks, the marks must be considered in their
`
`entireties. In re Electrolyte Laboratories, Inc, 929 F. 2d 645, 647, 16 USPQ2d 1239, 1240 (Fed.
`
`Cir. 1990) (wherein the court held that a “K+” design and the mark “K+EFF” for dietary
`
`potassium supplements were sufficiently different to avoid likelihood of confusion.)
`
`In both sound and appearance Applicant’s mark is a multi-word mark in stark contrast to
`
`the cited registration. Applicant respectfully disagrees with the Examiner’s conclusion that the
`
`applicant’s mark is highly similar to the cited registration. Applicant’s mark is dominated by (1)
`
`the company name LOCMAN (which as the Examiner has noted, is used in at least four (4) US
`
`TM registrations in connection with a wide variety of goods) and (2) the place of manufacture of
`
`the goods sold under the mark, ITALY. The fact that the word ITALY is subject to a disclaimer
`
`does not remove it from consideration when evaluating the overall impression of the Applicant’s
`
`mark when compared to other marks.
`
`It is clear from the comparison of Applicant’s mark and the cited registration that the
`
`marks are dissimilar in sight, sound, connotation and commercial impression.
`
`As the court held in Kellogg Co. v. Pack ’em Enterprises, Inc., 951 F. 2d 330, 21 USPQ
`
`2d 1142 (Fed. Cir. 1991), a great difference between an applicant’s mark and the cited
`
`registration is enough to obtain registration. In Kellogg, the Federal Circuit affirmed the Board’s
`
`decision granting the applicant’s summary judgment motion because the Board properly
`
`considered all the relevant du Pont factors before making its determination that the applicant’s
`
`mark FROOTEE ICE and design for frozen flavored liquid bars was so different in appearance
`
`from opposer’s mark FOOT LOOPS for breakfast cereals, dessert sundaes, shakes and frozen
`
`confections that no likelihood of confusion would occur from the simultaneous use of the marks.
`
`

`

`77/801,258
`Law Office 112
`
`Darryl M. Spruill, Esq.
`
`Applicant respectfully requests reconsideration based on the cited differences between
`
`the Applicant’s mark and the cited registration.
`
`Early and favorable action is earnestly solicited.
`
`It is requested that the Examiner contact the undersigned with any questions.
`
`Respectfully sj bmitted, A
`
`‘Kat leen A. Costigan
`
`CERTIFICATE OF MAILING under 37 CFR 1.8
`‘
` : I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient postage
`as first class mail in an envelope addressed to:
`
`HEDMAN & COSTIGAN’ RC‘
`1230 Avenue of the Americas, 7”‘ Floor
`New York’ NY 10020
`(212) 302'8989
`
`Commissioner for Trademarks
`P.O. B
`1451
`Alcxaniiia, VA 22313-1451 /
`
`Kathleen A. Costigan
`212-302-8989
`
`