PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`77855157
`
`LAW OFFICE 104
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`The Office Action has rejected the identification of goods set forth in classes 9, 16, 24, 25 and 28 as being indefinite. Applicant has amended
`the identification of goods as suggested by the Examining Attorney. In so doing, Applicant has moved watches from class 9 to new class 14,
`moved car magnets from class 16 to class 9 and clarified the wording “car magnets”, “car flags”, “fleeces” and “Christmas ornaments.”
`
`Having adopted the suggestions of the Office Action, Applicant respectfully requests that the Examining Attorney withdraw her rejection to
`the identification of goods.
`
`The Office Action has also issued a Section 2(d) refusal based on likelihood of confusion with respect to the goods “watches, car magnets, car
`flags and clothing, namely, sweat shirts and fleeces” (now classified in classes 9, 14, 24 and 25). According to the Examining Attorney,
`registration is being refused for these goods because of a likelihood of confusion with the marks in U.S. Registration Nos. 1532657, 1858662
`and 3370320 (collectively, the “Los Angeles Registrations”).
`
`Initially, Applicant notes that while the Examining Attorney asserted that there is a likelihood of confusion based on the similarity of the
`marks, the similarity of the goods and the similarity of the trade channels of the goods, the Office Action is entirely void of any discussion
`with respect to the channels of goods. Thus, the Examining Attorney’s rejection rests solely on the alleged similarity of the marks and the
`alleged similarity of the goods.
`
`Applicant respectfully asserts that the rejection is improper because (1) there is no similarity of the trade channels of the goods; (2) the manner
`in which the goods are marketed is entirely different; (3) Applicant and the Los Angeles Dodgers have co-existed since 1958 without any
`confusion; and (4) Applicant’s LA logo and the LA logos set forth in the Los Angeles Registrations have co-existed since approximately
`1965 without any confusion. Therefore, relevant consumers would not be confused as to source in the ordinary course of purchasing such
`goods with ordinary care.
`
`Briefly, Applicant Loyola Academy is a private, co-educational, Roman Catholic college preparatory high school located in Wilmette, Illinois,
`a northern suburb of Chicago, Illinois. Opened in 1909, Loyola Academy has been continuously run by The Society of Jesus (The Jesuits)
`and has been committed to providing a formative educational experience resulting in graduates who are leaders of competence, conscience
`and compassion. See Exhibit A (select webpages from www.goramblers.org, Applicant’s website, and the Wikipedia article on Applicant.)
`
`In contrast, the owner of the Los Angeles Registrations, the Los Angeles Dodgers, is a major league baseball team that moved to Los Angeles
`and adopted the LA logo in 1958. Prior to 1958, the Dodgers were based in Brooklyn, New York and were known as the Brooklyn Dodgers
`from 1932-1957. See Exhibit B (Wikipedia article on the Los Angeles Dodgers).
`
`With respect to trade channels of the goods and the manner in which the goods are marketed, Applicant notes that LA-branded goods provided
`by the Los Angeles Dodgers are typically marketed in professional sporting channels of trade such as sporting good stores that carry wears
`emblazoned with professional baseball emblems and stores owned and operated by the Los Angeles Dodgers (e.g., stores run inside the
`baseball stadium where the Los Angeles Dodgers play baseball, etc.). In contrast, Applicant’s goods are typically marketed to prospective
`students, students and alumni of Loyola Academy. In most instances, Applicant’s goods are sold on school property in Wilmette, Illinois, at
`sporting events at which Applicant’s athletic teams participate, and on-line at the Loyola Store (http://www.goramblers.org/Bookstore/).
`
`Accordingly, it is obvious that the channels of trade and the manner in which Applicant’s and the Los Angeles Dodgers’ goods are marketed
`are vastly different. It is almost inconceivable that a hypothetical ordinary purchaser of both Los Angeles Dodgers’ and Applicant’s goods,
`buying with ordinary care, would be confused as to the source of the goods. Indeed, common sense demonstrates that customers of Los
`Angeles Dodgers’ goods and customers of Applicant’s wears are attuned to the differences between professional baseball team attire and
`goods and goods associated with a Jesuit high school located in Wilmette, Illinois, and the marketing environment in which such goods are
`sold.
`
`
`
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`77855157
`
`LAW OFFICE 104
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`The Office Action has rejected the identification of goods set forth in classes 9, 16, 24, 25 and 28 as being indefinite. Applicant has amended
`the identification of goods as suggested by the Examining Attorney. In so doing, Applicant has moved watches from class 9 to new class 14,
`moved car magnets from class 16 to class 9 and clarified the wording “car magnets”, “car flags”, “fleeces” and “Christmas ornaments.”
`
`Having adopted the suggestions of the Office Action, Applicant respectfully requests that the Examining Attorney withdraw her rejection to
`the identification of goods.
`
`The Office Action has also issued a Section 2(d) refusal based on likelihood of confusion with respect to the goods “watches, car magnets, car
`flags and clothing, namely, sweat shirts and fleeces” (now classified in classes 9, 14, 24 and 25). According to the Examining Attorney,
`registration is being refused for these goods because of a likelihood of confusion with the marks in U.S. Registration Nos. 1532657, 1858662
`and 3370320 (collectively, the “Los Angeles Registrations”).
`
`Initially, Applicant notes that while the Examining Attorney asserted that there is a likelihood of confusion based on the similarity of the
`marks, the similarity of the goods and the similarity of the trade channels of the goods, the Office Action is entirely void of any discussion
`with respect to the channels of goods. Thus, the Examining Attorney’s rejection rests solely on the alleged similarity of the marks and the
`alleged similarity of the goods.
`
`Applicant respectfully asserts that the rejection is improper because (1) there is no similarity of the trade channels of the goods; (2) the manner
`in which the goods are marketed is entirely different; (3) Applicant and the Los Angeles Dodgers have co-existed since 1958 without any
`confusion; and (4) Applicant’s LA logo and the LA logos set forth in the Los Angeles Registrations have co-existed since approximately
`1965 without any confusion. Therefore, relevant consumers would not be confused as to source in the ordinary course of purchasing such
`goods with ordinary care.
`
`Briefly, Applicant Loyola Academy is a private, co-educational, Roman Catholic college preparatory high school located in Wilmette, Illinois,
`a northern suburb of Chicago, Illinois. Opened in 1909, Loyola Academy has been continuously run by The Society of Jesus (The Jesuits)
`and has been committed to providing a formative educational experience resulting in graduates who are leaders of competence, conscience
`and compassion. See Exhibit A (select webpages from www.goramblers.org, Applicant’s website, and the Wikipedia article on Applicant.)
`
`In contrast, the owner of the Los Angeles Registrations, the Los Angeles Dodgers, is a major league baseball team that moved to Los Angeles
`and adopted the LA logo in 1958. Prior to 1958, the Dodgers were based in Brooklyn, New York and were known as the Brooklyn Dodgers
`from 1932-1957. See Exhibit B (Wikipedia article on the Los Angeles Dodgers).
`
`With respect to trade channels of the goods and the manner in which the goods are marketed, Applicant notes that LA-branded goods provided
`by the Los Angeles Dodgers are typically marketed in professional sporting channels of trade such as sporting good stores that carry wears
`emblazoned with professional baseball emblems and stores owned and operated by the Los Angeles Dodgers (e.g., stores run inside the
`baseball stadium where the Los Angeles Dodgers play baseball, etc.). In contrast, Applicant’s goods are typically marketed to prospective
`students, students and alumni of Loyola Academy. In most instances, Applicant’s goods are sold on school property in Wilmette, Illinois, at
`sporting events at which Applicant’s athletic teams participate, and on-line at the Loyola Store (http://www.goramblers.org/Bookstore/).
`
`Accordingly, it is obvious that the channels of trade and the manner in which Applicant’s and the Los Angeles Dodgers’ goods are marketed
`are vastly different. It is almost inconceivable that a hypothetical ordinary purchaser of both Los Angeles Dodgers’ and Applicant’s goods,
`buying with ordinary care, would be confused as to the source of the goods. Indeed, common sense demonstrates that customers of Los
`Angeles Dodgers’ goods and customers of Applicant’s wears are attuned to the differences between professional baseball team attire and
`goods and goods associated with a Jesuit high school located in Wilmette, Illinois, and the marketing environment in which such goods are
`sold.
`
`
`
`
`Moreover, as briefly described above, Applicant opened its door in 1908 as Loyola Academy, approximately 50 years before the Brooklyn
`Dodgers became the Los Angeles Dodgers. Applicant began using the LA logo in 1965 and began use of the LA logo in interstate commerce
`in 2005. The LA logo is, as any common observer can see, an outgrowth of Applicant’s name, Loyola Academy. The simple facts are that
`Applicant and the Los Angeles Dodgers have co-existed and have used the same logo without any evidence of confusion or likelihood of
`confusion for more than a half a century.
`
`Because the channels of trade and the marketing environments associated with goods of the Los Angeles Dodgers and goods of Loyola
`Academy are vastly different, and because both the L.A. Dodgers and Loyola Academy have co-existed and have used the identical logo for
`more than 50 years, the hypothetical relevant person/consumer who encounters both marks would not be confused as to the identity of the
`source of such goods.
`
`Accordingly, the Office Action’s suggestion that the similarity of the marks and the similarity of the goods leads to a finding of likelihood of
`confusion is incorrect. As demonstrated above, other du Pont factors strongly mitigate against any such conclusion and, indeed, demand the
`opposite result: Applicant’s mark will not and does not cause a likelihood of confusion in view of the Los Angeles Registrations.
`
`For these reasons, withdrawal of the instant rejection is respectfully solicited. Applicant earnestly requests allowance and publication of the
`mark.
`
`EVIDENCE SECTION
`
` EVIDENCE FILE NAME(S)
`
` ORIGINAL PDF FILE
`
` CONVERTED PDF FILE(S)
` (12 pages)
`
` ORIGINAL PDF FILE
`
` CONVERTED PDF FILE(S)
` (20 pages)
`
`evi_389814067-170932756_._Exhibit_A.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0002.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0003.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0004.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0005.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0006.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0007.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0008.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0009.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0010.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0011.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0012.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0013.JPG
`
`evi_389814067-170932756_._Exhibit_B.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0014.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0015.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0016.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0017.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0018.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0019.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0020.JPG
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0021.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0022.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0023.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0024.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0025.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0026.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0027.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0028.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0029.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0030.JPG
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`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0031.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0032.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\778\551\77855157\xml1\ROA0033.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Exhibit A and Exhibit B
`
`GOODS AND/OR SERVICES SECTION (009)(class deleted)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`009
`
`Watches
`
`Section 1(a)
`
`At least as early as 00/00/2004
`
`At least as early as 00/00/2007
`
`GOODS AND/OR SERVICES SECTION (014)(class added)Original Class (009)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`014
`
`Watches
`
`Section 1(a)
`
`At least as early as 00/00/2004
`
`At least as early as 00/00/2007
`
`GOODS AND/OR SERVICES SECTION (016)(class deleted)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`016
`
`Car magnets
`
`Section 1(a)
`
`At least as early as 00/00/2005
`
`At least as early as 00/00/2006
`
`GOODS AND/OR SERVICES SECTION (014)(class added)Original Class (016)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`014
`
`Decorative car magnets
`
`Section 1(a)
`
` FIRST USE ANYWHERE DATE
`
`At least as early as 00/00/2005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` FIRST USE IN COMMERCE DATE
`
`At least as early as 00/00/2006
`
`GOODS AND/OR SERVICES SECTION (024)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`024
`
`Car flags
`
`Section 1(a)
`
`At least as early as 00/00/2005
`
`At least as early as 00/00/2007
`
`GOODS AND/OR SERVICES SECTION (024)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`Car flags; Fabric car flags
`
`FINAL DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`024
`
`Fabric car flags
`
`Section 1(a)
`
`At least as early as 00/00/2005
`
`At least as early as 00/00/2007
`
`GOODS AND/OR SERVICES SECTION (025)(current)
`
`INTERNATIONAL CLASS
`
`025
`
`DESCRIPTION
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`Clothing, namely, sweat shirts and fleeces
`
`Section 1(a)
`
`At least as early as 00/00/1965
`
`At least as early as 00/00/2005
`
`GOODS AND/OR SERVICES SECTION (025)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`025
`
`Clothing, namely, sweat shirts and fleeces; Clothing, namely, sweat shirts, fleece jackets, fleece pullovers, and fleece vests
`
`FINAL DESCRIPTION
`
`Clothing, namely, sweat shirts, fleece jackets, fleece pullovers, and fleece vests
`
`FILING BASIS
`
` FIRST USE ANYWHERE DATE
`
` FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 00/00/1965
`
`At least as early as 00/00/2005
`
`GOODS AND/OR SERVICES SECTION (028)(no change)
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`/Angelo J. Bufalino/
`
`Angelo J. Bufalino
`
`Attorney of Record, Illinois bar member
`
`08/02/2010
`
`/Angelo J. Bufalino/
`
`Angelo J. Bufalino
`
`
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Attorney of Record, Illinois bar member
`
`08/02/2010
`
`YES
`
`Mon Aug 02 17:18:36 EDT 2010
`
`USPTO/ROA-XX.XX.XXX.XX-20
`100802171836081433-778551
`57-470f3cbb37378898fcb3a4
`e5a39fc3a1d62-N/A-N/A-201
`00802170932756288
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77855157 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`The Office Action has rejected the identification of goods set forth in classes 9, 16, 24, 25 and 28 as being indefinite. Applicant has amended
`the identification of goods as suggested by the Examining Attorney. In so doing, Applicant has moved watches from class 9 to new class 14,
`moved car magnets from class 16 to class 9 and clarified the wording “car magnets”, “car flags”, “fleeces” and “Christmas ornaments.”
`
`Having adopted the suggestions of the Office Action, Applicant respectfully requests that the Examining Attorney withdraw her rejection to the
`identification of goods.
`
`The Office Action has also issued a Section 2(d) refusal based on likelihood of confusion with respect to the goods “watches, car magnets, car
`flags and clothing, namely, sweat shirts and fleeces” (now classified in classes 9, 14, 24 and 25). According to the Examining Attorney,
`registration is being refused for these goods because of a likelihood of confusion with the marks in U.S. Registration Nos. 1532657, 1858662
`and 3370320 (collectively, the “Los Angeles Registrations”).
`
`Initially, Applicant notes that while the Examining Attorney asserted that there is a likelihood of confusion based on the similarity of the marks,
`the similarity of the goods and the similarity of the trade channels of the goods, the Office Action is entirely void of any discussion with respect
`to the channels of goods. Thus, the Examining Attorney’s rejection rests solely on the alleged similarity of the marks and the alleged similarity
`of the goods.
`
`Applicant respectfully asserts that the rejection is improper because (1) there is no similarity of the trade channels of the goods; (2) the manner in
`which the goods are marketed is entirely different; (3) Applicant and the Los Angeles Dodgers have co-existed since 1958 without any
`confusion; and (4) Applicant’s LA logo and the LA logos set forth in the Los Angeles Registrations have co-existed since approximately 1965
`without any confusion. Therefore, relevant consumers would not be confused as to source in the ordinary course of purchasing such goods with
`ordinary care.
`
`Briefly, Applicant Loyola Academy is a private, co-educational, Roman Catholic college preparatory high school located in Wilmette, Illinois, a
`northern suburb of Chicago, Illinois. Opened in 1909, Loyola Academy has been continuously run by The Society of Jesus (The Jesuits) and has
`been committed to providing a formative educational experience resulting in graduates who are leaders of competence, conscience and
`compassion. See Exhibit A (select webpages from www.goramblers.org, Applicant’s website, and the Wikipedia article on Applicant.)
`
`In contrast, the owner of the Los Angeles Registrations, the Los Angeles Dodgers, is a major league baseball team that moved to Los Angeles
`and adopted the LA logo in 1958. Prior to 1958, the Dodgers were based in Brooklyn, New York and were known as the Brooklyn Dodgers
`from 1932-1957. See Exhibit B (Wikipedia article on the Los Angeles Dodgers).
`
`With respect to trade channels of the goods and the manner in which the goods are marketed, Applicant notes that LA-branded goods provided
`
`
`
`
`by the Los Angeles Dodgers are typically marketed in professional sporting channels of trade such as sporting good stores that carry wears
`emblazoned with professional baseball emblems and stores owned and operated by the Los Angeles Dodgers (e.g., stores run inside the baseball
`stadium where the Los Angeles Dodgers play baseball, etc.). In contrast, Applicant’s goods are typically marketed to prospective students,
`students and alumni of Loyola Academy. In most instances, Applicant’s goods are sold on school property in Wilmette, Illinois, at sporting
`events at which Applicant’s athletic teams participate, and on-line at the Loyola Store (http://www.goramblers.org/Bookstore/).
`
`Accordingly, it is obvious that the channels of trade and the manner in which Applicant’s and the Los Angeles Dodgers’ goods are marketed
`are vastly different. It is almost inconceivable that a hypothetical ordinary purchaser of both Los Angeles Dodgers’ and Applicant’s goods,
`buying with ordinary care, would be confused as to the source of the goods. Indeed, common sense demonstrates that customers of Los Angeles
`Dodgers’ goods and customers of Applicant’s wears are attuned to the differences between professional baseball team attire and goods and
`goods associated with a Jesuit high school located in Wilmette, Illinois, and the marketing environment in which such goods are sold.
`
`Moreover, as briefly described above, Applicant opened its door in 1908 as Loyola Academy, approximately 50 years before the Brooklyn
`Dodgers became the Los Angeles Dodgers. Applicant began using the LA logo in 1965 and began use of the LA logo in interstate commerce in
`2005. The LA logo is, as any common observer can see, an outgrowth of Applicant’s name, Loyola Academy. The simple facts are that
`Applicant and the Los Angeles Dodgers have co-existed and have used the same logo without any evidence of confusion or likelihood of
`confusion for more than a half a century.
`
`Because the channels of trade and the marketing environments associated with goods of the Los Angeles Dodgers and goods of Loyola Academy
`are vastly different, and because both the L.A. Dodgers and Loyola Academy have co-existed and have used the identical logo for more than 50
`years, the hypothetical relevant person/consumer who encounters both marks would not be confused as to the identity of the source of such
`goods.
`
`Accordingly, the Office Action’s suggestion that the similarity of the marks and the similarity of the goods leads to a finding of likelihood of
`confusion is incorrect. As demonstrated above, other du Pont factors strongly mitigate against any such conclusion and, indeed, demand the
`opposite result: Applicant’s mark will not and does not cause a likelihood of confusion in view of the Los Angeles Registrations.
`
`For these reasons, withdrawal of the instant rejection is respectfully solicited. Applicant earnestly requests allowance and publication of the
`mark.
`
`EVIDENCE
`Evidence in the nature of Exhibit A and Exhibit B has been attached.
`Original PDF file:
`evi_389814067-170932756_._Exhibit_A.pdf
`Converted PDF file(s) (12 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Original PDF file:
`evi_389814067-170932756_._Exhibit_B.pdf
`Converted PDF file(s) (20 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`
`
`
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`Evidence-17
`Evidence-18
`Evidence-19
`Evidence-20
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant hereby deletes the following class of goods/services from the application.
`Class 009 for Watches
`
`Applicant hereby deletes the following class of goods/services from the application.
`Class 016 for Car magnets
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 024 for Car flags
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 00/00/2005 and first used in commerce at least as early as 00/00/2007, and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Car flags; Fabric car flags
`
`Class 024 for Fabric car flags
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 00/00/2005 and first used in commerce at least as early as 00/00/2007, and is now in use in such commerce.
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 025 for Clothing, namely, sweat shirts and fleeces
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 00/00/1965 and first used in commerce at least as early as 00/00/2005, and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Clothing, namely, sweat shirts and fleeces; Clothing, namely, sweat shirts, fleece jackets, fleece pullovers, and
`fleece vests
`
`Class 025 for Clothing, namely, sweat shirts, fleece jackets, fleece pullovers, and fleece vests
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 00/00/1965 and first used in commerce at least as early as 00/00/2005, and is now in use in such commerce.
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 014 (Original Class: 009 ) for Watches
`Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 00/00/2004 and first used in commerce at least as
`early as 00/00/2007, and is now in use in such commerce.
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 014 (Original Class: 016 ) for Decorative car magnets
`Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 00/00/2005 and first used in commerce at least as
`
`
`
`early as 00/00/2006, and is now in use in such commerce.
`
`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: /Angelo J. Bufalino/ Date: 08/02/2010
`Signatory's Name: Angelo J. Bufalino
`Signatory's Position: Attorney of Record, Illinois bar member
`
`Response Signature
`Signature: /Angelo J. Bufalino/ Date: 08/02/2010
`Signatory's Name: Angelo J. Bufalino
`Signatory's Position: Attorney of Record, Illinois bar member
`
`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: 77855157
`Internet Transmission Date: Mon Aug 02 17:18:36 EDT 2010
`TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20100802171836081
`433-77855157-470f3cbb37378898fcb3a4e5a39
`fc3a1d62-N/A-N/A-20100802170932756288
`
`
`
`
`Loyola Academy - Wikipcdia, the flee encyclopedia
`
`http://en.wikipediaorg/wiki/Loyola*Academy
`
`EXHIBIT A
`
`Loyola Academy
`
`From Wikipedia, the free encyclopedia
`
`Loyola Academy is a private, co-educational college
`preparatory high school, located in Wilmette, Illinois,
`
`a northern suburb ofChicago. Located in the Roman
`
`Catholic Archdiocese of Chicago, it is one of 47
`Jesuit high schools in the United States and is a
`member of the Jesuit Secondary Education
`Association. It is also the largest Jesuit high school in
`America, with over 2,000 students from more than 80
`
`different zip codes throughout the Chicago area.
`
`‘ Contents
`
`I 1 History
`. 2 Academics
`I 3 Service
`I 4 Athletics
`
`I 5 Notable alumni
`' 5-1 AlLh]eti05
`I 5.2 Politics and public service
`I 5.3 Arts and letters
`_ 5_4 Business and technology
`' 6 Notable Staff
`' 7 Notes
`I 8 References
`I 9 External links
`
`_
`
`-
`History
`
`’
`
`.
`Loyola Academy was founded as a Roman Catholic,
`college preparatory school for young men in 1909.
`The school was originally located in Rogers Park,
`Chicago, on the campus of Loyola University
`Chicago's Dumbach Hall; it moved to the current
`Wilmette campus in 1957. Both Loyola University
`and its prep school adjunct, Loyola Academy, were
`named after the Basque intellectual and Spanish
`Anny General, Ignatius of Loyola, who founded the
`Society of Jesus (the Jesuits).
`
`Loyola Academy
`
`5
`
`Women and Men for Others
`Address
`
`1100 Laramie Avenue
`
`Wilmette, Illinois, 60091
`USA
`
`School type
`Denomination
`Olieneil
`
`Information
`_
`_
`private, parochial, secondary
`Roman Catholic
`1909
`
`Archdiocese of Chicago
`Authority
`Jesuits
`Oversight
`I 44403i1]
`CEEB Code
`_
`__
`_
`l;e]v[.2ratr1ck l;. McGrath,
`President
`Vice President of David McNu|ty[3l
`Academic Affairs
`Grades
`Gender
`
`Campus
`I
`C” °"‘)
`Athl ti
`conffiflgce
`
`-
`
`Ch'
`C th I'
`1
`Gir'lcsag(;th$|icO’:h]::§ue
`(GCAC)
`Ramblers [4]
`
`Team name
`_
`_
`_
`_
`A°"°d"at'°“(S) Nmh Central Ass°°'a[t5'§’” °f
`_
`_
`C°""ges and S°h°°'S
`P“b"°“t‘°"
`Menagerie -4145W
`Newspaper
`The prepl7l
`yearbook
`The yew.
`
`7/30/2010 10:41 AM
`
`
`
`Loyola Academy — Wikipedia, the free encyclopedia
`
`http://en.wikipediaorg/wiki/Loyola,_Academy
`
`As a precondition to granting approval to move to the
`suburbs, the Archdiocese of Chicago required the
`Jesuits to stipulate that they would continue to serve
`the young Roman Catholic men of the city of
`Chicago. Consequently, Loyola Academy had a
`significant representation of Chicago residents, of
`various financial means which gave the school an
`economic diversity unique in the Chicago area.
`
`Affiliation
`
`website
`
`I
`
`‘
`__
`T
`
`‘
`
`.
`
`Jesuit Secondary Education
`Association
`
`h“P‘”W“’W'g°”"“b'°‘S-°'3
`'
`-
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`I
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`A ICHIO-X UK“
`'-OYOI-A ACADEP-‘W
`A.u..e<_.
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`i.
`
`During the bulk of its history, Loyola Academy
`maintained the strict disciplinary and academic
`regimen seen in most exclusive American prep
`schools. Students were required to wear blazers and ties, maintain silence when moving between classes,
`attend weekly Mass on campus, address their teachers as either "sir" or "Father," and maintain a
`demeanor befitting the Jesuit educational ideal of "Men for others."
`
`One of Loyola's "sister schools" was Regina Dominican High School, an all—girls Academy located less
`than a mile away in Wilmette. Beginning in 1970, small groups of select Regina students began
`commuting to Loyola to take selected advanced science and computer science classes, as these classes
`were unavailable on their campus at the time.
`
`The Jesuit presence has not been as large as it used to be in the school's past, with some 40 priests
`teaching and working at the school in 1961, down to 11 out of roughly 200 staff members in 200'/J8]
`
`In 1994, Loyola Academy merged with Saint Louise de Marillac High School, an all-girls high school
`from Northfield, Illinois, which was on the verge of bankruptcy and became a coveducational school [1]
`(http://wwwillinoisloop.org/cath_closed_schoo1_84_04.pdt) . In 2003, Loyola Academy opened a new
`60-acre (240,000 m2) campus in Glenview, Illinois. The property, once part of the abandoned Glcnview
`Naval Air Station (NAS Glenview), was purchased by Loyola in 2001 and now houses several athletic
`fields for lacrosse, baseball, softball, and soccer, a cross country path, and a wetland preserve area that
`has been used as a natural laboratory for science classes.
`
`While Loyola Academy is a Jesuit, Catholic school, it has always welcomed non-Catholics seeking at
`Loyola education.
`
`Academics
`
`Loyola Academy offers a comprehensive liberal arts curriculum with over 110 courses in language arts,
`fine arts (dance, music, theater, visual arts, and architecture), foreign languages (Spanish, French,
`German, Latin, Mandarin Chinese and Ancient Greek), mathematics, physical education, science, social
`studies, and theology. (As it is a college-preparatory high school, it does not offer any true vocational
`courses.) The school has two competitive honors programs (the Dumbach Scholars and the Clavius
`Scholars), and a plethora of students enrolled in AP classes. Loyola also offers the O'Shaughnessy
`Program, which assists students who show the potential for success in college but may require smaller
`classes and extra help from teachers. Annually, about 99% of students are accepted by four-year
`universities.
`
`Loyola has a particularly strong tradition of educating students in the classics. The school fields a
`
`7/30/2010 10:41 AM
`
`
`
`Loyola Academy - Wikipedia, the free encyclopedia
`
`http://en.wikipedia,org/wiki/l.oyola,Academy
`
`Certamen team, and in 2005, six students received perfect scores on the National Latin Examination,
`while 44 others were named Gold Medalists. In addition, Loyola Academy is one of only three high
`schools in the Chicago area to offer Ancient Greek as a language course, and is the only high school in
`Illinois to offer a four year Ancient Greek program. Loyola is also very active in forensics, Scholastic
`Bowl, and Science Olympiad competitions.
`
`.—
`r..»—¢--'
`
`..
`
`.,.
`
`.- z
`-v
`
`'
`
`'_
`
`,. ;
`
`'
`
`Aerial photo of Loyola Academy's Wilmette campus
`
`Service
`
`Loyola places a particularly strong emphasis on community service, encouraging their students to be
`"Women and Men for Others, Leaders in Service." During the summer, many students join service sites
`across the United States and around the world, and during the school year, Loyola's "Life! Be In It!"
`program allows students to in participate in Amnesty International, Habitat for Iltunani
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