Letter response to Office Action – USPTO

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

APPLICANT:                                     DAISSA, INC.

SERIAL NO.:                                     78801551

FILED:                                                January 27, 2006

MARK:                                                ALUCOMEX

EXAMINER:                                       Laura A. Hammel

TRADEMARK LAW OFFICE:         116

 

BOX RESPONSES NO FEE

COMMISSIONER FOR TRADEMARKS

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

RESPONSE TO OFFICE ACTION 

Dear Colleague:

 

                        This is in response to the Office Action mailed on July 20, 2006, objecting to the subject ALUCOMEX mark on the basis of three prior registrations, and requesting clarification of the goods covered by the subject application. 

 

Section 2(d) – Likelihood of Confusion Refusal 

            Applicant respectfully submits that the registrations cited by the Examiner, namely ALUCOBOND, ALUCORE, and ALUCOBEST will not cause confusion with the subject mark for the following reasons.

 

            It should be noted initially that one registrant owns the ALUCOBOND and ALUCORE marks, while another registrant owns the ALUCOBEST mark.  All marks refer to the aluminum industry.  The cited marks are currently coexisting peacefully on the trademark register.  The fact that these marks are peacefully coexisting without confusion on the register lends weight to the fact that the subject mark will likewise not cause confusion.

 

            In testing for likelihood of confusion under Section 2(d), the Du Pont factors need to be considered, including factors such as the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; the purchasers of the goods i.e. “impulse” vs. careful, sophisticated purchasing; and the number and nature of similar marks in use on similar goods.  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). 

            The subject ALUCOMEX mark and the cited registrations all contain the term ALUCO, which is clearly a vague allusion to an aluminum Company.  The second syllable of each mark, however, is completely different; namely MEX, BOND, BEST, and CORE.  The second syllable of each mark is what distinguishes these marks phonetically, and in appearance, connotation, and commercial impression.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566 (Fed. Cir. 1984). 

            Taking the commercial impression of the marks, it is clear to those in the industry that ALUCO is a vague reference to an aluminum company or product.  However, the sophisticated consumers in the industry will easily be able to distinguish the marks on the basis of the second syllable of the marks.  MEX is distinguished from BOND, BEST and CORE, from its connotation of mixing a product. 

            Futher, the ALUCOBEST mark is italicized and is the color blue, factors further distinguishing the mark from the subject mark.  

            Taking the sixth Du Pont factor, the number and nature of similar marks in use on similar goods weighs in favor of allowing registration of the subject ALUCOMEX mark.  The fact that there are ALUCO-formative marks owned by different registrants peacefully coexisting without confusion shows that there is room for another ALUCO-formative mark, particularly one with a completely different appearance and sound when taking into account the second, and distinguishing, syllable of the marks. 

            Further, the aluminum industry consists of expensive products with sophisticated consumers.  In the case of ALUCOMEX the consumer, by way of example, are high-rise building developers, who would certainly make careful inquiry into the quality and cost of the product they are buying.  As noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,  21 USPQ2d 1388, 1392 (Fed. Cir. 1992), “sophisticated consumers may be expected toexercise greater care.” Pignons S.A. de Mecanique de Precision v.Polaroid Corp., 212 USPQ 246, 252 (1st Cir. 1981); and “There is alwaysless likelihood of confusion where goods are expensive and purchasedafter careful consideration.” Astra Pharmaceuticals Prods., Inc. v.Beckman Instruments, Inc., 220 USPQ 786, 790 (1st Cir. 1993). 

            In addition, the Office should look to “something more” than the mere fact that the subject marks contain ALUCO and are in some way involved in the aluminum industry.  See Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982). 

            The subject ALUCO matter can also be analogized to another metal product – STEEL – in which there are a number of STEEL formative marks coexisting on the register and in the steel industry.   

 

Identification of Goods 

            The Examiner has requested that the identification of goods be clarified; and Applicant submits the following: 

International Class 006:   Aluminum composite building panels; prefabricated or modular ceiling panels; cladding panels; closure panels; container panels; face panels for buildings; fence panels; floor tile panels; floor panels; frame panels; signboard panels; non-luminous and non-mechanical sign panels; panels for covering the interiors and exteriors of buildings; partition panels; balcony-railing panels; cover-panels for equipment; warning and indicating panels provided with an inscription for signaling or conveying a message; all having an aluminum skin and plastic core for use in the construction industry. 

Conclusion 

            For the foregoing reasons, Applicant requests that the objections of the Examiner be withdrawn, the specification of goods amended as outlined above, and the subject application be allowed to proceed. 

                                                                        Very truly yours, 

 

 

                                                                        Michael D. Stewart                                                                        Attorney for Applicant                                                                       


335 S. Biscayne Blvd.

, #UPH00

                                                                        Miami, Florida 33131                                                                        midstewart@gmail.com                                                                        p:  954-778-1181                                                                        f:   866-380-8986 

 

 

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Sample Distribution Agreement

 

 

This Agreement is entered into as of January 1, 1998 by and between Acuson Corporation (“Acuson”), a Delaware corporation having its principal place of business a

1220 Charleston Road, Mountain View, California U.S.A.

94039-7393 and U.S.-China Industrial Exchange, Inc.(“Distributor”) having its principal place of business at

7201 Wisconsin Avenue, Suite 703, Bethesda, Maryland 20814, U.S.A.

 

In consideration of the mutual covenants herein, the parties hereby agree as follows: 

1.   Products. 

The products of Acuson subject to this Agreement(“Products”) are thosedelineated on Exhibit A.  These Products may be changed from time to time by Acuson giving Distributor not less than (30) days prior notice of any such changes. 

2.   Territory. 

The Territory covered by this Agreement(“Territory”) is as set forth on Exhibit A. 

3.   Distribution Appointment and Distributor s Responsibilities. 

3.1  Authorized Distributor. 

     During the term of this Agreement, Distributor shall be Acuson s authorized distributor solely within the Territory for the sale of Products to customers for use in diagnostic and therapeutic applications (“customers”). 

Subject toSection 5.4, Distributor acknowledges that Acuson may call on customers in the Territory and may sell the Products in the Territory itself. 

3.2  Sales. 

     Distributor shall use its best efforts fully and actively to promote, maintain and increase sales of the Products in the Territory. 

3.3  Training. 

     Distributor shall train all customers in the Territory in the use of the Products. Such training shall be performed as soon as practicable following installation to ensure that the customer is properly using the Products. 

3.4  Promotional Activities. 

     Distributor shall (i) maintain a sales organization which in the opinion of Acuson is adequately qualified and trained, and, unless Acuson otherwise agrees in writing, which at a minimum must include the equivalent of two full-time sales persons in the Territory and two full-time field application specialists;(ii) maintain an active sales program for all potential and actual customers of the Products; (iii) promote and advertise Products and  participate in trade shows; and (iv) prepare and distribute any and all sales aids, sales literature, other promotional materials, training aids and literature as needed or as reasonably requested by Acuson.  Distributor agrees to provide additional sales and field application support as may be required to support new Products. 

3.5  Promotional Distributor Materials. 

     Distributor shall not give a customer any warranty for the Products other than as set forth in Section 6, unless otherwise agreed by Acuson.Distributor shall obtain prior written approval from Acuson prior to distribution of any promotional material. 

3.6  Service. 

     Distributor shall maintain a technically qualified service capability and use its best efforts to service and maintain all Products in the Territory, and shall maintain an adequate inventory of spare parts which shall be used for repairs and replacements of Products whether under Acuson s standard warranty or not.  Acuson shall issue credit for or replace the part in Distributor s inventory upon receipt of a complete report on the failure and, at Acuson s reasonable request, return of the failed part. Distributor shall provide Acuson reports of Distributor s service activities, in such form and at such times as Acuson may reasonably request. 

3.7  Customs and Freight Charges. 

     Distributor shall perform and be financially responsible for all functions to clear Products through non-United States customs, and arrange and pay for transportation of the Products from Acuson s facility in Mountain View, California, U.S.A. to the customer. 

3.8  Demonstration System. 

     Distributor agrees to keep at least one dedicated Demo system in the Territory at all times.  Accordingly, if Distributor sells its Demo system, Distributor agrees immediately to purchase another Demo system, from Acuson on mutually acceptable terms. Distributor may purchase a maximum of one Demo system every two years. 

3.9  Reports 

     At least 30 days prior to the beginning of each calendar quarter, Distributor shall provide Acuson with forecasts by quarter of anticipated customer sales and purchases from Acuson, by Product, for the next four quarters; and provide Acuson with such other reports as Acuson may reasonably request. 

3.10 Records. 

     Distributor shall maintain a complete record of all sales of Products, showing customer name, date of sale, instrument model and serial number, and copies of all sales order acknowledgments and invoices for all Products.Distributor shall also maintain a compete record of all service calls relating to Products, showing customer name, date of call, instrument model and serial number, nature of call, service work performed and other information as Acuson may reasonably request.  The records referred to in this Section, or copies thereof, shall be supplied to Acuson upon its request. 

3.11 Customer Complaints. 

     Distributor shall notify Acuson immediately of any complaints or problems concerning the Products or any misuse of the Products. 

3.12 Notification of Infringement. 

     Distributor shall notify Acuson immediately of any actual, suspected or alleged infringement of Acuson patents, trademarks or copyrights that it becomes aware of in the Territory. 

3.13 Competitive Products. 

     Without Acuson s prior written consent. Distributor shall not distribute or sell any products competitive with or similar to Products and/or services relating thereto. 

3.14 Confidential Information. 

     During the term of this Agreement and at all times thereafter, Distributor shall acknowledge as proprietary and keep confidential(i) allconfidential or proprietary information covering Products and/or processes, including without limitation, technical specifications, engineering data, diagnostic software and printed circuit boards, price lists and customer lists, (ii) any information disclosed to Acuson by any third party which Acuson is obligated to treat as confidential or proprietary, or (iii) any information pertaining to the business of Acuson or any of its customers, consultants or affiliates, acquired or learned by Distributor during the term of this Agreement, or (iv) any other information designated by Acuson as confidential or proprietary.  Distributor acknowledges that the information referred to in this Section 3.14 (Proprietary Information”) shall at all times remain the property of Acuson and shall be deemed furnished to Distributor in confidence. Distributor shall use Proprietary Information only in connection with its obligations under this Agreement. 

3.15 Government Authorizations. 

     Distributor shall obtain and continue to maintain in good standing all licenses, permits and  other governmental approvals and/or authorizations required in connection with this Agreement and the sale of Products in the Territory, including without limitation, import licenses and foreign exchange permits.  Distributor shall keep Acuson apprised of the status of such licenses, permits and approvals /authorizations. 

3.16 Expenses. 

     Except as otherwise specifically provided in this Agreement, Distributor shall pay its own expenses I carrying out its obligations under this Agreement. 

4    Acuson s Responsibilities 

 

4.1  Assistance. 

     Acuson shall make available a reasonable supply of sales literature, including catalogues, data sheets, brochures and similar material, all in English language, or in a foreign language as far as it is available, and furnish reasonable  sales technical assistance from time to time, including sales and service training of Distributor s employees. Payment of the costs for such training shall be mutually agreed upon. 

4.2  Inquiries. 

     Acuson shall promptly forward to Distributor all Product inquiries received from customers within the Territory during the term of this Agreement. 

5.   Order Acceptance, Delivery terms and Payments 

5.1  Orders. 

     Orders by Distributor are subject to acceptance by Acuson at Acuson s facility in Mountain View, California U.S.A., or at such other facility as Acuson may from time to time determine.  All orders shall be accepted subject to the terms and conditions of Acuson s then current terms and conditions of sale (the current version of which is attached hereto as Exhibit C), unless otherwise provided in this Agreement.  Such order terms may be changed by Acuson at any time, but no such change shall have any effect o orders already accepted by Acuson. 

     Purchase orders must be addressed to Acuson at the address set forth on the first page of this Agreement.  The provisions of this Agreement shall supersede any provisions contained in Distributor s purchase orders and any other communications from Distributor and/or its customers.  Purchase orders may be declined or accepted, wholly or in part, at Acuson s sole discretion.Acuson will not unreasonably withhold acceptance. 

5.2  Price. 

     Acuson shall sell Products to Distributor at the prices listed in the then current version of Exhibit A, less applicable discounts listed in then current version of Exhibit B.  Prices quoted are F.O.B.Acuson s facility in Mountain View, California, U.S.A.  Acuson may change prices and/or discounts from time to time upon ninety (90) days written notice.  No commission or other form of compensation shall be payable by Acuson to Distributor.  Distributor shall pay (and shall indemnify Acuson against) all applicable taxes and fees, including without limitation, a value added, personal property, use of similar taxes, customs duties, import ant  and similar charges incurred or payable with respect to the import and sale of the Products in the Territory. 

5.3  Title. 

     Subject to Section 8, title to and risk of loss of Products shall pass to Distributor upon delivery of the Products to Distributor or Distributor s customer, whichever occurs first. 

5.4  Payments. 

     All payments for Products shall be due and paid in full within 30 days from the date of Acuson s invoice by letter of credit acceptable to Acuson in accordance with the payment terms set forth on Exhibit A. 

     In event that a customer located in the Territory orders directly form Acuson, all payments for Products shall be due and paid in full by letter of credit \acceptable to Acuson within thirty (30) days from the date of Acuson s invoice.  Acuson agrees to pay Distributor a sum equivalent to the discount structure agreed upon in Exhibit B within thirty (30) days from receipt of payment in full by the customer. 

6.   Warranty 

     Acuson warrants that the Products will be free from defects in materials and workmanship for a period ending thirteen (13) months from date of shipment, provided that options added after initial installation of the Acuson 128 or the Acuson 128XP are covered by the foregoing warranty for a period of one (1) year after the date of the installation of the option or until the end of the 13 month period referred to above, whichever is longer.  The Products furnished under this Agreement may contain components or parts that have been reprocessed to assure compliance with performance and reliability specifications. Acuson s sole liability under valid warranty claims will be limited, at Acuson s option, to repair or replacement of defective parts of the Products during Acuson s normal business hours.  Upon replacement, any removed part shall become the property of Acuson.  All warranty replacement or repair of parts will be limited to Product malfunctions which, in the reasonable opinion of Acuson, are due and traceable to defects in original material and workmanship. In order to enable Acuson to properly administer this warranty, Distributor will notify Acuson promptly in writing of any claims and will provide Acuson with the opportunity to inspect and test each Product claimed to be defective.This warranty does not extend to Products or parts thereof that have been subjected to misuse, abuse, improper application, alteration, accident, negligence or incorrect repair or servicing not performed or authorized by Acuson. 

THIS WARRANTY IS IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.  ACUSON SHALL NOT BE LIABLE FOR ANY LOSS, DDMAGE OR EXPENSE OF ANY KIND WHATSOVER CAUSED BY THE EQUIPMENT OR BY ANY DEFECT THEREIN.  THE USE OR MAINTENANCE THEREOF, OR ANY SERVICING OR ADJUSTMENT THERETO, NOT EXPRESSLY COVERED BY THE WARRANTY CONTAINED HEREIN. 

7.   Limitation of Liability. 

     In no event whether in contract, tort (including negligence), strict liability or otherwise will Acuson be liable (a) for special, indirect or consequential damages or for any lost profits, or (b) to Distributor or any other person for an amount greater than the purchase price actually paid to Acuson for the Product with respect to which such liability relates. 

8.   Software License. 

     Acuson or its suppliers retain(s) ownership of and title to any computer program supplied with or in connection with the Products, to any diagnostic, remedial or installation software and printed circuit boards provided to Distributor and to the trade secrets embodied in such computer programs, software and boards.  Subject to acceptance of the obligations in this Section and to the fulfillment of these obligations, Acuson grants Distributor s immediate customer a perpetual, non-exclusive license to use such computer program, software and boards solely in the form and on the medium in which such program, software or board is delivered for the purpose of operating the Products in accordance with the instructions set forth in the Operator s Manual supplied with the Product and for no other purposes whatsoever. Acuson grants Distributor a non-exclusive license only during the term of this Agreement to use such diagnostic, remedial and installation software and printed circuit boards, solely in the form an don the medium in which such software and boards are delivered, for the purpose of servicing Products sold to customers pursuant to this Agreement in accordance with service instructions supplied by Acuson and for no other purpose whatsoever.  Neither Distributor nor its customer may reverse assemble, reverse compile or otherwise reverse engineer such computer programs, software or printed circuit boards, nor may it make a copy thereof or apply any techniques to derive the trade secrets embodied therein.  Distributor agrees that it will forward to Acuson the customer s written consent to comply with the terms of this Section. In event of a failure by Distributor or Distributor s customer to comply with the terms of this license, the license granted by this Section shall terminate.  Further, because unauthorized use of such computer programs, software and boards will leave Acuson without an adequate remedy at law, injunctive or other equitable relief will be appropriate to restrain such use, threatened or actual.Distributor s customer may assign such customer s license hereunder to its immediate purchaser by forwarding to Acuson the purchaser s written consent to comply with the terms of this Section.  Distributor further agrees that(I) any of Acuson s suppliers of software is a direct and intended beneficiary of this software license and may enforce it directly against Distributor s customers with respect to software supplied by such Supplier, and (ii) NO SUPPLIER OF ACUSON SHALL BE LIABLE TO DISTRIBUTOR ANY CUSTOMER FOR ANY GENERAL, SPECIAL, DIRECT, INDIRECT, CONSEQUENTIAL, INCIDENTAL OR OTHER DAMAGES ARISING OUT OT THE SUBLICENSE OF THE SOFTWARE AND COMPUTER PROGRAMS SUPPLIED WITH THE PRODUCTS. 

9.   Independence of Distributor; Reference to Acuson. 

     Distributor agrees to conduct business in its name as an independent distributor and contractor.  No employment, agency, joint venture, or similar arrangement is created or intended between Acuson and Distributor. Distributor has no right or authority to act for or bind Acuson in any respect or to make any representations or warranties, express or implied, on behalf of Acuson. 

     However, so long as this Agreement remains in effect, Distributor may indicate to the public that it is an authorized distributor of the Products and may advertise such Products under Acuson trademarks, logos and symbols. 

10.  Compliance with United States Export Regulations. 

     Distributor acknowledges that Acuson has informed it that United States law and the United States Export Administration Regulations (“EAR”) govern an may forbid the export, reexport or other disposition, without prior United States government approval, of Products, spare parts and related technical data received by Distributor or its customers in the Territory.  Distributor therefore warrants that it will adhere to all provisions of United States law and the EAR and to the terms , conditions, required procedures and documentation of any export license available or issued for delivery to Distributor or its customers of Products, spare parts or technical data. Upon request, Distributor shall provide Acuson all customer information and documentary assistance required to maintain strict compliance with such law, the EAR and such license(s).  Distributor shall take all actions within its power which may be reasonably necessary to assure that no customer contravenes any United States law, the EAR or the provisions of any such license. Acuson shall be relieved of all obligations to provide Products, spare parts or technical data to Distributor or any customer, should Distributor or such customer violate United States law, the EAR or the provisions of any export license(s), or should such license(s) be suspended or revoked by the United States government. 

 

11.  Force Majeure. 

     If the performance of this Agreement or any obligation hereunder (except payment of monies due) is prevented, restricted or interfered with by reason of fire or other casualty or accident, strikes or labor disputes, problems in procurement of raw materials, power or supplies, war or other violence, any law, order, proclamation, regulation, ordinance, demand or requirement of governmental agency or intergovernmental body, or any other act or condition whatsoever beyond the reasonable control of a party hereto (an “Event of Force Majeure”), the party so effected, upon giving notice to the other party, shall be excused from such performance to the extent and throughout the duration of such  prevention, restriction or interference. Notwithstanding theforegoing, should an Event of Force  Majeure remain in effect for a period of six (6) months, Acuson and Distributor hereby agree to promptly renegotiate the terms of this Agreement, and if an agreement cannot be reached within sixty (60) days of the end of such six (6) month period, the party not so effected by the Event of Force Majeure shall have the option to terminate this Agreement and if such party so elects, then this Agreement shall automatically terminate and be of no further force or effect, subject to Sections 13.5, 13.6, 13.7, and 13.8. 

 

12.  Assignability, Distributor s Organization. 

     (a) This Agreement shall be binding on the parties hereto, their successors, and permitted assigns.  This Agreement may not be assigned by Distributor in whole or in part, directly or indirectly, by operation of law, or otherwise, without the prior written approval of Acuson.  Any such purported transfer shall be void and of no effect. 

     (b) This Agreement has been entered into by Acuson relying upon Distributor s present organization and personnel. Distributor shallimmediately advise Acuson of any changes affecting Distributor s ability to perform hereunder or any changes affecting the ownership or control of Distributor. 

13.  Duration and Termination. 

     Except as otherwise provided in this Agreement, the term of this Agreement shall be as set forth on Exhibit A. 

13.1 Termination by Acuson on 60 Days Notice. 

     Acuson shall have the right upon 60 days notice to Distributor to terminate this Agreement and to appoint other distributors or make any other arrangements regarding sales of the Products in the Territory (I) if, during the term of this Agreement, Distributor fails to dedicate the equivalent of two full-time field sales persons and two full-time field application specialists to sell and promote Products in accordance with Section 3.4 or(ii) if, during any calendar year, Distributor fails to purchase any pay for Products in an amount that at least equals the minimum quotas set forth in Exhibit D. 

13.2 Termination by Either Party. 

     Should the following event occur, either party may terminate this Agreement immediately by giving the other party notice of suchtermination: 

     If any proceeding in bankruptcy, reorganization or arrangement for the appointment of an assignee, referee, receiver or trustee for Distributor or any other proceeding under any law for the relief of creditors hall be instituted by or against distributor or if Distributor admits in writing of its inability to pay its debts as they mature. 

13.3 Immediate Termination by Acuson.Should any of the following events occur, Acuson may terminate this Agreement immediately by giving Distributor notice of such termination: 

(i)            The material breach by Distributor of any of the provisions of this Agreement, including failure to remit payments for Products as provided in Section 5.4; (ii)        Any sale, transfer or relinquishment by operation of law or otherwise, of any substantial interest in the ownership of Distributor;(iii)    Any material or other substantial change in the management or organization of Distributor, which in Acuson s opinion, significantly impairs Distributor s ability to distribute and support Products in the Territory. 

13.4 Termination by Distributor. 

     Distributor may terminate this Agreement immediately by giving Acuson notice if there is a material breach by Acuson of any of the provisions of this Agreement. 

13.5 Effect of Termination. 

     All orders not shipped by the date of termination shall be deemed canceled unless otherwise agreed by Acuson. Termination of this Agreement for any reason whatsoever shall not relieve Distributor of its obligation to make prompt payment in full of any and all amounts owed to Acuson which are accrued and outstanding as of the date of termination and shall not relieve either party from any other liability or obligation which has previously accrued as of such date. Acuson s right of termination under Section 13.1(i) or 13.3 is in addition to any other right or remedy Acuson may have as a result of Distributor s breach of this Agreement. The provisions of Section 3.14 shall survive termination of this Agreement. 

13.6 No Damages Upon Termination. 

     It is expressly understood and agreed that the rights of termination as provided in this Agreement are absolute and that both parties have considered, (i) making expenditures in preparing for performance of this Agreement and (ii) possible losses and damages incident and resulting to them in the event of its termination.  Therefore, in agreeing to said terms of termination, it is with full knowledge of such possibilities, and except as expressly provided herein, neither party shall  have any liability to the other for compensation, damages or otherwise by reason of such termination in accordance with the terms of this Agreement. 

13.7 Return of Materials. 

     Upon termination of this Agreement for any reason, Distributor shall immediately cease using any materials which indicates it is an authorized distributor of Acuson and cease using any Acuson trademark, logo, symbol or any mark or name confusingly similar thereto.  In addition, upon such termination, all rights to use Acuson s trademarks, logos and symbols shall terminate.Distributor shall also deliver to Acuson (a) all records and copies thereof relating to service and sales, including those referred to in Sections 3.6, 3.9, and 3.10, (b) all operator of service manuals and materials, diagnostic software and printed circuit boards, sales aids, sales literature, other promotional materials, training aids and literature in Distributor s possession or under Distributor s control, and all copies thereof, and (c) all documentation and copies thereof containing or concerning Proprietary Information.  Distributor shall make no further use of any of the materials referred to in this Section 13.7. 

13.8 Inventory. 

     The parties agree to use best efforts to reach a mutually acceptable agreement on Products (including spare parts purchased from Acuson) which are in Distributor s inventory as of the date of termination of this Agreement. 

14.  Sole Understanding/Modification. 

14.1 Sole Understanding. 

     This Agreement is the entire and sole agreement and understanding of the parties hereto with respect to the subject matter hereof and supersedes all other prior agreements, understandings and communications related thereto, whether oral or written. 

14.2 Modification. 

     This Agreement can be modified or amended only with the written agreement of an authorized signatory of the parties hereto.  

15.  Construction and Governing Law. 

15.1 Governing Language. 

     In the event that this Agreement is translated into any language other than English, the English language version of this Agreement shall be controlling and govern. 

15.2 No Waiver. 

     The failure by Acuson to enforce or take advantage of any of the provisions of this Agreement shall not constitute nor be construed as a waiver of such provisions or of the right subsequently to enforce or take advantage of each and every such provision. 

15.3 Notices. 

     Any notices made pursuant to this Agreement shall be in writing and shall be deemed delivered upon receipt (or upon refusal of acceptance of delivery) and shall be hand delivered, telexed or mailed, airmail, postage prepaid, addressed to Distributor or Acuson, as the case may be, at the address shown on page 1 of this Agreement or such other address as a party may designate by notice in accordance with this Section. 

15.4 Governing Law. 

     This Agreement shall be governed by and construed in accordance with the laws of the  State of California, U.S.A. applicable to contracts made and wholly to be performed in California by residents of California. 

15.5 Compliance with Law. 

     Distributor agrees to comply with all applicable laws, rules and regulations of the Territory and to do nothing to cause Acuson to violate the law, rules and regulations of the U.S.A.  If this Agreement or the performance hereof, is determined to be contrary of the laws, rules or regulations of the Territory or of the U.S.A., this Agreement will automatically terminate subject to Sections 13.5, 13.6, 13.7 and 13.8. 

In Witness Whereof, the undersigned have executed and delivered this Agreement by their duly authorized representatives as of the date first above written. 

 

ACUSON CORPORATION                      U.S.-CHINA INDUSTRIAL EXCHANGE,INC. 

By: /s/ F. Steven Feinberg              By: /s/ Robert C. Goodwin, Jr. 

Name:  F. Steven Feinberg               Name: Robert C. Goodwin, Jr.                                                   

Title: VP, Asia-Pacific/Latin America   Title: Executive Vice Presidentand General Counsel  

 

 

 

 

 

This Agreement, is made and entered into this _____ day of ___________, _______ by and between ____________________________, a _______________ corporation with offices at _________________________________________, the United States of America, (hereinafter called “Manufacturer”) and ________________________ (“Distributor”), with offices at ____________________________________. 

The parties hereto agree as follows: 

  

I. ASSOCIATION 

Distributor shall act as an exclusive distributor of Manufacturer s ______________________________________ as described in attached Exhibit A(“Products”) throughout the countries of ________________________________________________ (the “Territory”). 

  

II. DUTIES 

1. Distributor agrees to actively and diligently promote the sale of the Products in the Territory during the Term hereof. Manufacturer shall refer to Distributor inquiries for Products in the Territory. 

2. Distributor agrees to promote in the Territory the Manufacturer s names and the Products during the Term hereof. Distributor agrees tonotify Manufacturer of any leads of interest granted for any products. 

III. ASSISTANCE BY MANUFACTURER 

Manufacturer agrees to furnish Distributor with reasonable quantities of Manufacturer s catalogs, manuals, advertising literature and other sales aids that may be available by Manufacturer. Any such sales aids provided shall be in English. Manufacturer further agrees to provide Distributor with reasonable home office support and technical assistance upon terms and conditions to be agreed upon from timeto time. 

IV. INTELLECTUAL PROPERTY RIGHTS 

Distributor shall not use Manufacturer s trade names and/or trademarks without the prior, express written consent of Manufacturer. Under no circumstances shall Distributor, at any time, use Manufacturer s trade names, trademarks or other proprietary information as part of Distributor s corporate or trade name. Upon termination of this Agreement, Distributor shall remove all references to Manufacturer from its letterheads, advertising literature and places of business, andshall not thereafter use any similar or deceptive name or trademarkintending to give the impression that there is any relationship between the parties. 

V. SALES FORCE 

Distributor shall maintain a competent and experienced sales force sufficient to adequately serve the Territory. 

VI. CUSTOMER SERVICING 

Distributor shall maintain in the Territory sufficient inventory of the Products so as to permit filling and shipping against current customer orders normally shipped from Distributor s warehouse stock. Distributor agrees to notify Manufacturer if it opens any new offices or branches or closes or ceases to operate through one of its offices or branches. 

VII. ORDERS/ACCEPTANCE/PRICE AND TERMS 

1. All orders from Distributor are subject to approval and final acceptance by Manufacturer. Price lists to Distributor shall be as set forth in Exhibit B (as revised from time to time byManufacturer in its sole discretion) in effect on date of shipment. Fornonstandard Products which are sold to Distributor for resale, the price shall be as quoted to Distributor at time of inquiry, provided that the inquiry is within thirty (30) calendar days of order entry. 

2. Payment to Manufacturer by Distributor shall be in United States currency. Upon the placing of order(s), Distributor shall cause an irrevocable confirmed letter of credit to be issued by a United States financial institution satisfactory to Manufacturer, in favor of said Manufacturer, unless another arrangement is previously approved in writing by Manufacturer. 

VIII. WARRANTY AND FORCE MAJEURE 

1. Manufacturer warrants that all Products delivered hereunder shall be of Manufacturer s standard quality. MANUFACTURER MAKES NO OTHER WARRANTIES, EXPRESS OR IMPLIED: THERE ARE NO IMPLIED WARRANTIES INCLUDING WARRANTY OF MERCHANTABILITY OR FITNESS FOR APARTICULAR PURPOSE. 

2. Manufacturer shall not be liable for damages resulting from delays in shipment or inability to ship due to normal production and shipment delays or those resulting from acts of God, fires, floods, wars, sabotage, accidents, labor disputes or shortages, plant shutdown or equipment failure, voluntary or involuntary compliances with anylaw, order, rule or regulation of governmental agency or authority; orinability to obtain material (including power and fuel), equipmentor transportation, or arising from any other contingency, circumstances or event beyond the control of the Manufacturer. 

IX. LIMITATION OF LIABILITY 

No claims of any kind, whether as to materials delivered or for nondelivery of materials from Manufacturer, and whether arising in tort or contract, shall be greater in amount than the purchaseprice of the products in respect of which such damages are claimed;and the failure to give notice of the claim to Manufacturer where theorder was placed within sixty (60) calendar days from the date fixed for delivery shall constitute a waiver by Distributor of all claims inrespect of such Products. In no event shall Manufacturer be liable for special, indirect or consequential damages. Any claim with respect todefective Products or breach of warranty must be promptly made and shall apply to Products properly used, stored, applied and maintained. X. RELATIONSHIP BETWEEN MANUFACTURER AND DISTRIBUTOR 

Distributor is not an agent, employee or legal representative of Manufacturer, but an independent contractor. Distributor does not have any authority to assume or create any obligation or responsibility on behalf of Manufacturer or bind Manufacturer in any manner whatsoever. The relationship between manufacturer and Distributor is that of vendor and vendee. Distributor further agrees to defend, indemnify and hold Manufacturer harmless from and against any and all claims of third parties that would not have arisen but for an act or omission byDistribution that is contrary to the above-acknowledged relationship orany other term hereof. 

XI. TERM/CANCELLATION 

1. This Agreement shall become effective as of the date hereof upon execution by an officer or other authorized representative of the Manufacturer in the United States and by an authorized representative of Distributor and shall remain in effect for _________ years thereafter unless previously terminated by either party for any otherreason upon not less than thirty (30) calendar days prior writtennotice to the other party. 

2. Without limitation, the following events shall constitute grounds for termination by Manufacturer: 

(a) if Distributor shall file or have filed against it a petition in bankruptcy or insolvency or if Distributor shall make an assignment for benefit of its creditors of if Distributor s viability as a going concern should, in Manufacturer s judgment, become impaired; ((b) if Distributor fails to provide and maintain a proper and sufficient sales force;(c) if Distributor degrades and places in bad repute the name and reputation of Manufacturer expressly or by virtue of its methods of handling and/or promoting the Products;(d) if Distributor fails to meet any other of its obligations hereunder; or(e) if Distributor fails to meet minimum purchase goals, as defined in Exhibit C. 

3. Except as may be otherwise determined pursuant to the laws of the jurisdiction where Distributor has its principle office, Manufacturer shall have no liability to Distributor by any reason of any termination or cancellation of this Agreement by Manufacturer,including without limitation, liability for direct or indirect damages on account of loss of income arising from anticipated sales, compensation,or for expenditures, investments, leases or other commitmentsor for loss of goodwill or business opportunity or otherwise. 

4. Upon termination by either Manufacturer of Distributor, Manufacturer shall have the option of buying back from Distributor any new unsold Products purchased from Manufacturer, at the prices charged to Distributor, less Manufacturer s then applicable restocking charge, if any, and less any additional expenses incurred by Manufacturerarising out of termination by Distributor 

XII. NONDISCLOSURE 

All information transferred or otherwise revealed to Distributor by Manufacturer under this Agreement, including but not limited to, engineering information, manufacturing information, technology, know-how and price books or lists, will at all times remain Manufacturer s property. Distributor shall at all times hold such informationconfidential and shall not disclose any such information if nototherwise within the public domain. Upon any termination of this Agreement, or as Manufacturer directs from time to time, Distributor shall promptly return all such information to Manufacturer, together with any copies or reproductions thereof. Distributor s obligations under this section shall survive any termination of the Agreement. 

XIII. CERTAIN PRACTICES 

Distributor acknowledges that certain laws of the United States applicable to the Manufacturer, but which may not be applicable to Distributor, impose fines or penalties on Manufacturer in the event Manufacturer makes payments to foreign government officials for thepurpose of influencing those officials in making a businessdecision favorable to Manufacturer. In addition, Manufacturer andDistributor may be subject to similar laws or requirements of the country of destination of the Products. 

Distributor agrees upon reasonable request by Manufacturer to give Manufacturer reasonable written assurance that the Distributor has done nothing to cause liability to Manufacturer under the above-mentioned laws. 

XIV. NOTICES 

All notices and other communications required or permitted hereunder shall be in writing and shall be deemed to have been served or delivered1. when personally served or delivered to one party by the serving or delivering party; or2. when deposited in the mail, postage prepaid by the serving or delivering party addressed to the other party as follows: 

If to Manufacturer: 

___________________________ 

___________________________ 

___________________________ 

___________________________ 

  

If to Distributor: 

___________________________ 

___________________________ 

___________________________ 

___________________________ 

  

XV. VARIOUS 

This Agreement constitutes the entire and only agreement between the Manufacturer and Distributor with respect to its subject matter and there are no understandings or representations of any kind,express, implied, oral, written statutory or otherwise, not expresslyset forth herein. No alteration or modification of this Agreement shallbe binding unless in writing and signed by the party to be boundthereby. 

1. This Agreement is not assignable in whole or in part by either party without express written consent of the other. 

2. If Distributor consists of either two or more individuals or partners, each shall execute this Agreement on behalf of Distributor and each individual signing shall be jointly and severally liable to Manufacturer with respect to the obligations of Distributor under this Agreement. 

3. This Agreement shall be interpreted and enforced in accordance with the laws of the United States of America and the official language of this Agreement for all purposes shall be English. 

DISTRIBUTOR: 

___________________________ 

By: 

Title: 

MANUFACTURER 

________________________ 

By: 

Title: 

  

 

Exhibit AProduct Line:Territory: 

Appendix BDistributor Price List 

Appendix CExclusionsSample Clause:Foreign Corrupt Practices Act  

BUSINESS PRACTICES 

A. In the performance of their obligations under this Agreement, Agent shall comply strictly with all laws, regulations, orders and policies having the force of law, of _____________________________, and where applicable, all laws, regulations, orders and policies having the force of law of any other jurisdiction, including without limitation, the United States of America. 

B. In furtherance of the Agent s obligations hereunder, the Agent represents, warrants and agrees that, in connection with the performance of its duties hereunder, it shall not make any payments,in money or any other item of value or make any offers or promises topay any money or any other item of value to (a) any governmentofficial, (b) any foreign political party, (c) any candidate for foreign political officer or (d) any other person or entity, with the knowledge that such payment, offer or promise to pay will be made to any government official for the purpose of influencing such government official to make one or more business decisions favorable to Principal, Agent, or both. 

C. Agent further represents that no government official is a principal, owner, officer, employee or agent of any entity in which Agent has an interest, and no government official has any material financial interest in the business of the Agent. 

D. In the event of any breach by Agent of any of its representations, warranties or covenants contained in this Article, Principal may, in its sole discretion in addition to any other remedy provided herein or otherwise provided by law, immediately terminate this Agreement without notice or indemnity and in such event, Agent shall forever forfeit all rights to all fees and commissions which shall accrue and/or have been earned but which have not been paid as of the date of such termination. 

  

INDEMNIFICATION 

Notwithstanding the provisions set forth above in Article ____, Agent shall indemnify and hold harmless Principal against and from any claim,loss, damage or expense (including attorneys fees anddisbursements) (a) arising from any breach by Agent of anyrepresentation, warranty, covenant or other obligation of Agent under Article ____ of this Agreement, (b) resulting from any unlawful actcommitted by Agent or any agent of Agent thereof, or (c) which Principal may sustain by reason of any act, omission or is representation of Agent or Supervisor or any agent thereof. 

Territory and markets: The contract must clearly describe the distributor s territory or business area. The contract should define the market or customer category. For example, you may want yourcompany to handle certain major customers (like national accounts)directly and the distributor to handle other outlets. Will theterritory be broad (such as the entire U.S.) or narrow (such as Hackensack, New Jersey)? 

Exclusive versus nonexclusive: The contract should specify whether the distributor is to have exclusive or nonexclusive rights to the company s products in a particular territory. But be careful here, you don t want to give exclusivity for one territory or marketif you face significant risk of lousy performance by thedistributor. If you are going to give exclusive rights, consider setting sales goals that the distributor has to meet in order to maintain exclusivity. 

Obligations of the distributor: The distributor s obligations must be spelled out. Ideally, you want a clause that says the distributor must use its “best efforts to market your products,”although the distributor will resist this phrase. So, consider setting forth in the contract the specific steps that the distributor must take (contacting all the major potential customers, appointing dealers, preparing marketing material and promotional activities, and so on). 

Trademarks and logos: The Distribution Agreement should prohibit the distributor from using the company s name, trademark, and logos in advertising, point of sale activities, and marketing materials except as provided in the Distribution Agreement or with the company s prior written consent. This restriction is important to ensure that your company s goodwill, reputation, and brand name are not hurt bythe distributor s activities.  

Product issues: The contract needs to clearly identify the product or products that the Distribution Agreement covers. The agreement may also cover the issue of product availability and allocation of product among other distributors. The Distribution Agreement should also cover how the distributor will handle product inventory and what rights of return will be available. 

Service: You should decide the terms for servicing the product. Will the distributor handle product servicing or warranty claims? Does the distributor have the expertise to do so? How will you compensate the distributor for servicing the product?  

Price: The contract needs to provide a pricing section. Generally, the price follows a schedule or the seller announces the price from time to time. The seller then typically provides an agreed discount to the distributor. You need to maintain flexibility on the price you can charge for your products. 

Payment terms: Industry practices often dictate payment terms. Ideally, you would like to get an up-front deposit on a distributor s order with full payment due either 30 or 60 days after shipment. Make sure that you are comfortable with the distributor s creditworthiness. 

Contract term and termination: The distributor s term of the appointment and how such a term can be terminated or reviewed are very important issues in a Distribution Agreement. Try to get theright to terminate the contract for any reason, as long as you give atleast 60-90 days notice. Such a termination right gives you maximumflexibility to get out of a relationship that isn t working. Also, add a provision that allows you to immediately terminate the contract if the distributor breaches its obligations or becomes bankrupt or insolvent. You must also address the potentially complicated issue of what happens after termination with respect to products, sums owed, and servicing obligations. 

Yamoto motor products of China. Exclusive distributor for the United States,  Mexico, Canada, Brazil and Chile is Patriot Motorcycles Corp. They have a Nationwide dealer network with a nice 5 year warranty.The warranty is tied to the use of their own brand of lubricant. Wehad a program like that at eLuxury, I can tell you more if yourinterested, it s a money maker. They signed a Dist agreement with a Canadian distributor last June as exclusive distributors in Ontario, Quebec, New Brunswick, Nova Scotia, Prince Edward Island, and Newfoundland territories. That deal calls for an initial order of $1 million and an on-going commitment of at least 500 units per month until the end of the year. With a total of $3.5 million by years end and an ongoing 4 year commitment with a 7% increase each year.The agreement calls for the Canadian Distributor to establish a minimum of 60 dealers within 6 months and contains options for six additional exclusive territories. THESE GUYS ARE PLANNING TO BE THE FIRST GLOBAL CHINESE BRAND IN ATVs. HAVE A BRAND (Patriot) MAJOR PR FIRM AND THEDEALERSHIP NETWORK IT. WHAT DO YOU KNOW ABOUT THEM IN MEXICO? 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Child Custody Responsibility Checklist

Who was usually or most often responsible for performing the following childcare responsibilities?
Task Mother Father Shared
Feeding infant ______ ______ ______
Feeding younger children ______ ______ ______
Changing diapers ______ ______ ______
Holding/cuddling ______ ______ ______
Preparing meals ______ ______ ______
Packing lunches ______ ______ ______
Grocery shopping ______ ______ ______
Changing diapers ______ ______ ______
Dressing ______ ______ ______
Doing laundry ______ ______ ______
Buying clothing ______ ______ ______
Maintaining clothing ______ ______ ______
Bathing ______ ______ ______
Washing hair ______ ______ ______
Styling hair ______ ______ ______
Brushing teeth (help with or enforce) ______ ______ ______
Putting to bed ______ ______ ______
Reading stories, books ______ ______ ______
Helping with homework ______ ______ ______
Taking to/picking up from school ______ ______ ______
Taking to/picking up from extracurricular activities ______ ______ ______
Conferencing with teachers ______ ______ ______
Attending school open houses ______ ______ ______
School volunteering ______ ______ ______
Choosing schools ______ ______ ______
Helping choose classes ______ ______ ______
Attending PTA/PTO meetings ______ ______ ______
Taking to/picking up from religious services ______ ______ ______
Taking to/picking up from religious classes ______ ______ ______
Taking to/picking up from sports activities ______ ______ ______
Coaching sports teams ______ ______ ______
Taking to/picking up from lessons ______ ______ ______
Taking to/picking up from play dates ______ ______ ______
Arranging play dates ______ ______ ______
Hosting play dates ______ ______ ______
Taking to/picking up from birthday parties ______ ______ ______
Hosting birthday parties ______ ______ ______
Shopping for gifts for friends ______ ______ ______
Shopping for gifts for child ______ ______ ______
Shopping for school supplies ______ ______ ______
Shopping for toiletries ______ ______ ______
Taking to doctor ______ ______ ______
Taking to dentist ______ ______ ______
Taking to orthodontist ______ ______ ______
Making doctor/dentist appointments ______ ______ ______
Taking care of sick child ______ ______ ______
Hiring babysitters ______ ______ ______
Picking up/dropping off babysitter ______ ______ ______
Arranging daycare ______ ______ ______
Taking to/picking up from daycare ______ ______ ______
Planning holidays ______ ______ ______
Planning vacations ______ ______ ______
Teaching values ______ ______ ______
Teaching manners ______ ______ ______
Monitoring chores ______ ______ ______
Teaching sex education ______ ______ ______
Taking to park ______ ______ ______
Playing with indoors ______ ______ ______
Playing with outdoors ______ ______ ______
Cleaning home ______ ______ ______
Maintaining home ______ ______ ______
Other (please list):  

 

 

________________________________ ______ ______ ______
________________________________ ______ ______ ______
________________________________ ______ ______ ______

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Brazil Permanent Visa

Permanent Visa – Viper

Printer Friendly Version

Has previous authorization from the Ministry of External Relations, requested by the employer,  presenting contract of work approved by the Ministry of Labor in Brazil;

Shows proof of financial means to promote a direct investment in Brazil (for a minimum amount of US $200,000.00);

Is a retired person whose pension (minimum of US $2,000.00 per month per person) can be regularly transferred to Brazil. CLICK HERE for a list of procedures for transfer of pension funds;

Is a member of the clergy and belongs to a religious order or congregation established in Brazil;

One is a relative of a Brazilian citizen or alien permanent resident in Brazil.



Required Documents

1 Proof of residence (income tax, telephone bill or other).
2

Passport – original or certified copy showing name, number, place, date of issuance and date of expiration.

3

Certificate of birth.

4

Certificate of marriage (if applicable).

5

Police certificate of no criminal record issued within 90 days, for applicants over 16 years of age.

6

All documents must be previously notarized by the same Public Notary (to be chosen among those registered at this Consulate) and legalized by the Consulate General of Brazil in Miami. Legalization fee: US $60.00 in US Postal Money Order ONLY, issued in favor of “Consulate General of Brazil in Miami”.

After visa issuance authorization is received, applicant must present the following documentation:

1 Two Visa Application Forms (.pdf), duly filled-out (items 1 through 27) and signed, in the original; the Consulate will not accept forms sent by Fax.
2 Valid passport (Minimum validity 6 months). Passport must have at least two blank VISA pages. Note: the “Amendment Pages” are NOT blank pages and visas cannot be stamped on them.
3

Two individual photos, PASSPORT SIZE (2X2″) AND TYPE ONLY, front view, uncovered.



Fees

1

The fee for a Permanent Visa (Viper) is US $200.00 (US Postal Money Order Only) for all citizens.

2

United States citizens will be charged an additional non-refundable processing fee of US $100.00 per visa, in reciprocity to an identical fee paid by Brazilian citizens who apply for a Visa to the United States.

3

A non-refundable handling fee of US $10.00 per visa applies to visa applications submitted by mail or by any other person other than the applicant or an immediate family member.

4

Payments are accepted only in US Postal money order (made out to “Brazilian Consulate General in Miami“).

5

For citizens of the Commonwealth of the Bahamas, all fees must be paid with American Express or Thomas Cook money orders ONLY.

 

US CITIZENS WILL PAY US $300.00 FOR A PERMANENT VISA, WHEN APPLYING IN PERSON, OR US $310.00, WHEN APPLYING BY MAIL (PLUS THE US $60.00 LEGALIZATION FEE).

Download the Visa Form and begin filling it out on your computer. You may also print the form and fill it out by hand. When you are finished, just print the form and sign it.

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Revocation of Power of Attorney

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

APPLICANT:                                     Infinito Art & Cultural Foundation, Inc.

SERIAL NO.:                                     76599142

FILED:                                                June 24, 2004

MARK:                                                BRAZILIAN FILM FESTIVAL

============================================================

 

COMMISSIONER FOR TRADEMARKS

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

REVOCATION AND NEW POWER OF ATTORNEY 

Dear Colleague:

 

            Applicant  Infinito Art & Cultural Foundation, Inc. hereby revokes all previous powers of attorney and appoints Michael D. Stewart, Esq. to transact all business with the USPTO in connection with the subject registration.  Please direct all further correspondence and other communications to:

 

                        Michael D. Stewart, Esq.                        335 S. Biscayne Blvd., #UPH00

                        Miami, Florida 33131

                        p:  954-778-1181

                        f:   866-380-8986

                        midstewart@gmail.com

 

            Applicant identified and signing below hereby authorizes the above-named attorney as its representative.

           

                                                            Infinito Art & Cultural Foundation

 

 

 

Date:______________       By:______________________________

                                                            Adriana Dutra

 

           

                                                                                               

 

 

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Withdrawal of Appeal

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

 

In re the matter of:

                                                                        Trademark Examining Attorney

Infinito Art & Cultural Foundation, Inc.

                                                                        Priscilla Milton

U.S. Serial No.:  76599142                             

                                                                        Law Office 110

Filed:  June 24, 2004

 

Mark:  BRAZILIAN FILM FESTIVAL

 

BOX TTAB NO FEE

Commissioner for Trademarks

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

REQUEST TO WITHDRAW APPEAL 

            Applicant, through its undersigned counsel, on October 27, 2006 filed a Notice of Appeal of the Examining Attorney’s Final Office Action dated May 12, 2006.  The Examining Attorney has removed its objection to Applicant’s specimen of use, thereby making the subject Appeal mute.

            Applicant therefore withdraws its Appeal.

 

                                                            Respectfully submitted,

                                                            _______________________________

                                                            Michael D. Stewart, Esq.
                                                            Law Offices of Michael D. Stewart
                                                           

335 S. Biscayne Blvd., #UPH00
                                                            Miami, Florida 33131

                                                            midstewart@gmail.com                                                             1-305-394-8546 Telephone
                                                            1-866-438-6574 Toll-free
                                                            1-866-380-8986 Facsimile

Mailed:  December 19, 2006

 

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Response to Examiner

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:                     Infinito Art & Cultural Foundation, Inc.

                                                                       

U.S. Serial No.:            76599142                               

                                                                       

Filed:                            June 24, 2004

 

Mark:                           BRAZILIAN FILM FESTIVAL

 

Examining Attorney:  Priscilla Milton, Esq.

 

Law Office:   110

 

BOX RESPONSES NO FEE

COMMISSIONER FOR TRADEMARKS

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

 

FURTHER SUMBISSIONS IN CONNECTION

WITH REQUEST FOR RECONSIDERATION 

            Applicant herein submits further materials for consideration in connection with the Examiner’s final refusal of the specimens of use for BRAZILIAN FILM FESTIVAL Application No.:  76599142.  It is requested that these materials be placed on record for the Notice of Appeal which was sent on October 27, 2006, if the Appeal should be necessary and not moot.

 

            Applicant requests that the objections of the Examiner be withdrawn and the subject application be allowed to proceed to registration 

                                                                        Respectfully submitted, 

 

                                                                        _______________________________

                                                                        Michael D. Stewart, Esq.
                                                                        Law Offices of Michael D. Stewart
                                                                       

335 S. Biscayne Blvd., #UPH00
                                                                        Miami, Florida 33131

                                                                        midstewart@gmail.com                                                                         1-305-394-8546 Telephone
                                                                        1-866-438-6574 Toll-free
                                                                        1-866-380-8986 Facsimile

 

Mailed October 27, 2006

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Speciment of Use of Trademark

“… Trademark Rule 2.56(b)(2) provides that ‘[a] service mark specimen must show the mark as actually used in the sale or advertising of the services.’ When appropriate, the Board has been fairly flexible in accepting service mark specimens. See In re Ralph Mantia, Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992).” 

“A customer or potential customer viewing applicant’s specimen would readily perceive the ENKLAVVOICE mark as identifying the source of applicant’s website that allows users to engage the advertising and marketing services described therein. As a result, applicant’s specimen creates a direct association between the ENKLAVVOICE mark and applicant’s recited services.” 

The Board found that Applicant’s specimens “are ‘advertisements’ because they show the requisite direct association between the mark and the activities described thereafter.” 

 

[A]pplicant has never disputed the nature of thebackground but rather has repeatedly made the pointthat as a practical matter the topographical mapdesign is little more than an amorphous pattern ofcolors in the background. No matter how identifiablethe topographical map may appear in a grayscale or asa color image, it becomes far less identifiable in 2-color black and white… The applicant sought toregister the mark in true black and white 

 

USPTO rules (37 CFR § 2.51(b)) require:In an application under section 1(b) of the Act, thedrawing of the mark must be a substantially exactrepresentation of the mark as intended to be used onor in connection with the goods and/or servicesspecified in the application, and once an amendment toallege use under § 2.76 or a statement of use under§ 2.88 has been filed, the drawing of the mark must bea substantially exact representation of the mark asused on or in connection with the goods and/orservices. 

 

The TMEP § 807.12(d) (4th ed. rev. April 2005) sets outthe standard for determining whether an applicant ispermitted to register less than the entire mark shown on thespecimen.In an application under § 1 of the Trademark Act, themark on the drawing must be a complete mark, asevidenced by the specimen. When the representation ona drawing does not constitute a complete mark, it issometimes referred to as “mutilation.” This termindicates that essential and integral subject matter ismissing from the drawing. An incomplete mark may notbe registered.However, in a § 1 application, an applicant has somelatitude in selecting the mark it wants to register.The mere fact that two or more elements form acomposite mark does not necessarily mean that thoseelements are inseparable for registration purposes. Anapplicant may apply to register any element of a 

composite mark if that element presents, or willpresent, a separate and distinct commercial impressionapart from any other matter with which the mark is orwill be used on the specimen.The determinative factor is whether or not the subjectmatter in question makes a separate and distinctcommercial impression apart from the other element(s).The question of whether a mark is a mutilation “boilsdown to a judgment as to whether that designation for whichregistration is sought comprises a separate and distinct‘trademark’ in and of itself.” Institut National desAppellations D’Origine v. Vintners International Co., 958F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). 

Sheller-Globe Corp. v. Scott Paper Co.,204 USPQ 329, 337 (TTAB 1979):It is apparent that the commercial impressionprojected by applicant’s mark is generated by theletters “SG” in conjunction with the grid design andthe border without any contribution by the lines(which are mathematical curves) that depict technicalcharacteristics of the products to purchasers, whoconstitute a relatively narrowly defined class oftechnically informed persons. To require applicant toseek registration for each version of the “SG” anddesign mark containing a variation of the curve wouldunduly proliferate applications at unnecessary cost toapplicant and to the Patent and Trademark Office withno benefit to the public. 

 

 

We agree with applicant that“ITT Industries” and “AES Division” are equivalent to ahouse mark or trade name. The omission of these names doesnot normally result in a mutilation of the mark. In reServel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950)(“The courts in a proper case may recognize the right toregistration of one part of an owner’s mark consisting oftwo parts.” SERVEL functions as a mark apart from the termINKLINGS); Textron Inc. v. Cardinal Engineering Corp., 164USPQ 397, 399 (TTAB 1969) (“While the record does show thatTextron’s principal or house mark ‘HOMELITE’ appears on itschain saws as well as in all of its advertising literature,there is no statutory limitation on the number oftrademarks that one may use on or in connection with aparticular product to indicate origin”); and In re Emco,Inc., 158 USPQ 622, 623 (TTAB 1968) (“It is concluded thatthe law and the record support applicant’s position that‘RESPONSER’ is registrable without addition of the surname‘MEYER’”). 

 

Furthermore, mereproximity “does not endow the whole with a single,integrated, and distinct commercial impression.” DenaCorp. v. Belvedere International Inc., 960 F.2d 1555, 21USPQ2d 1047, 1052 (Fed. Cir. 1991). 

The topographical mapand the wording are insignificant elements. 

 

We conclude that the mark sought to be registeredcreates a separate and distinct commercial impression fromthe other material on the specimen. The mark stands out onthe specimen and the other material is insignificant aswell as hard to notice. Therefore, applicant’s mark is nota mutilation of a unitary mark, and it is a substantiallyexact representation of the mark shown on the specimen. 

Section 1 of The Trademark Act requires that anapplicant submit “specimens or facsimiles of the mark asused in commerce.” 15 U.S.C. § 1051. 

1051. Trademark ActSection 45 provides further that a mark is “in use incommerce … on goods when – (A) it is placed in any manneron the goods or their containers or the displays associatedtherewith or on the tags or labels affixed thereto …” 15U.S.C. § 1127. The Trademark Rules likewise specify, inpertinent part, that, “A trademark specimen is a label, tagor container for the goods, or a display associated withthe goods.” 37 C.F.R. § 2.56(b)(1). 

Catalogs and the electronic equivalent of catalogs maybe acceptable as specimens, provided they qualify as“displays associated with the goods” under cases, such as,Lands’ End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314(E.D. Va. 1992) and In re Dell Inc., 17 USPQ2d 1725 (TTAB2004). 

stating, “it issettled that, ‘There is no doubt that one product can bearmore than one protectable trademark.’ MCCARTHY ONTRADEMARKS § 7:2 and cases cited.” 

applies. A designationmay both identify a “process” or “technology” and functionas a mark. In re Lativ Systems, Inc., 223 USPQ 1037, 1038(TTAB 1984). 

See Trademark Rules 2.34(a)(1)(iv) and 2.86(a)(3). 

Trademark Rule2.51 provides that “the drawing of the mark must be asubstantially exact representation of the mark as used onor in connection with the goods and/or services.” 

The question iswhether the mark sought to be registered is a “mutilation”or an incomplete representation of the mark that isactually used. See, e.g. In re Miller Sports Inc., 51USPQ2d 1059 (TTAB 1999). 

1999).It is well settled that an applicant may seek toregister any portion of a composite mark if that portionpresents a separate and distinct commercial impressionwhich indicates the source of applicant’s goods or servicesand distinguishes applicant’s goods or services from thoseof others. See Institut National des AppellationsSer No. 782988987D’Origine v. Vintners International Co. Inc. 958 F.2d 1574,22 USPQ2d 1190, 1197 (Fed. Cir. 1992); and In re ChemicalDynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir.1988). If the portion of the mark sought to be registereddoes not create a separate and distinct commercialimpression, the result is an impermissible mutilation ofthe mark as used. 

As noted by our primary reviewing Court in ChemicalDynamics, supra at 1829, quoting 1 J. T. McCarthy,Trademarks and Unfair Competition §19:17 (2d ed. 1984), theissue of mutilation “all boils down to a judgment as towhether that designation for which registration is soughtcomprises a separate and distinct ‘trademark’ in and ofitself.” 

pplicant failed to submit acceptablespecimens pursuant to 37 C.F.R. §§ 2.51(a)(1), 2.51(b)(1),and 2.56(b)(2).” 

must be a directassociation between the mark sought to be registered andthe services specified in the application, with sufficientreference to the services in the specimen to create thisassociation.” 

The Trademark Act § 1(a)(1) (15 U.S.C. § 1051(a)(1))requires an applicant who is the owner of a trademark usedin commerce to file “such number of specimens or facsimilesof the mark as used as may be required by the Director.” Amark is used “on services when it is used or displayed inthe sale or advertising of services and the services arerendered in commerce, or the services are rendered in morethan one State or in the United States and a foreigncountry and the person rendering the services is engaged incommerce in connection with the services.” 15 U.S.C.§ 1127.(((me sale of advertising services…bz film 

“service mark specimen must show the mark as actuallyused in the sale or advertising of the services.” 37 CFR§ 2.56(b)(2). 

2.56(b)(2).The Federal Circuit addressed the question of theproper specimens for services in the following manner:It is not enough for the applicant to be a provider ofservices; the applicant also must have used the markto identify the named services for which registrationis sought. In In re Universal Oil Products Co. [476F.2d 653, 177 USPQ 456 (CCPA 1973)], the CCPA affirmedthe board’s refusal to register PACOL and PENEX asmarks for engineering services, even though theapplicant was a provider of such services, because themarks had been used only to identify certain processesand not to identify the engineering services for whichregistration was sought. The CCPA stated that theapplicant had failed to show a “direct association”between the mark and the services named in theapplication. The “direct association” test does notcreate an additional or more stringent requirement forregistration; it is implicit in the statutorydefinition of “a mark used * * * to identify anddistinguish the services of one person * * * from theservices of others and to indicate the source of theservices.”In re Advertising & Marketing Development Inc., 821F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987)(footnotesomitted). 

Regarding letterhead stationery, it “may be acceptableas evidence of service mark use, if it includes a referenceto the service.” In re Monograms America Inc., 51 USPQ2d1317, 1319 (TTAB 1999). “To create an association betweenthe mark and the services, the specimen does not have tospell out the specific nature or type of services. Ageneral reference to the industry may be acceptable.” TMEP§ 1301.04(c) (4th ed. April 2005). See, e.g., In re RalphMantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) and In reSouthwest Petro-Chem, Inc., 183 USPQ 371, 372 (TTAB 1974). 

 

“A drawing depicts themark sought to be registered.” 37 CFR § 2.52. The“drawing of the mark must be a substantially exactrepresentation of the mark as used on or in connection withthe goods and/or services.” 37 CFR § 2.51(a). 

a). Inasmuch asthe mark in the drawing is not a substantially exactrepresentation of the mark in the letterhead specimens,Ser. No. 764982567these specimens are not acceptable to support theregistration of the mark. 

the same mark that is in applicant’s drawing. There is aline of cases that supports the acceptability of specimensthat do not themselves set out what the services are whenthe specimens are used during the performance of theservices. In In re Red Robin Enterprises, Inc., 222 USPQ911, 914 (TTAB 1984), the board held that “the photographsof applicant’s costume mark on a garbed performer or model,as submitted in this case and with evidence of priorregistration for a collateral use, are adequate servicemark specimens.” In a subsequent case, the board foundthat a specimen consisting of a photograph of a two-colorfence was acceptable for a service mark for renting chainlink fences. In re Eagle Fence Rentals, Inc., 231 USPQ 228(TTAB 1986). 

theyshow use of applicant’s color scheme in the rendering(i.e., ‘sale’) of its services.” 

commerce.” We have no basis to conclude thatthese name plates are actually used as a service mark.Indeed, the affiant does not even mention the servicesspecifically. 

Section 1(a) of The Trademark Act requires that anapplicant submit “specimens or facsimiles of the mark asused” as part of the application. 15 U.S.C. § 1051(a)(1).The Act provides further that a mark is “in use in commerce. . . on services when it is used or displayed in the saleor advertising of the services.” 15 U.S.C. § 1127. TheTrademark Rules likewise specify, “A service mark specimenmust show the mark as actually used in the sale oradvertising of the services.” 37 C.F.R. § 2.56(b)(2). TheBoard has observed that use in the “rendition” of servicesshould be viewed as an element of the “sale” of servicesunder Section 45 of the Act. In re Red Robin Enterprises,Ser No. 782413965Inc., 222 USPQ 911, 913 (TTAB 1984). See also In reMetriplex Inc., 23 USPQ2d 1315, 1316 (TTAB 1992); In reEagle Fence Rentals, Inc., 231 USPQ 228, 230 (TTAB 1986). 

 

the possiblility that an acceptable specimen mayshow use of a mark only in the rendering of the servicesrather than in the advertisement of the services.Throughout the brief the examining attorney arguesthat the specimen must explicitly refer to the services.Here too the examining attorney takes too narrow a view.The Board has recognized that the service need not bereferenced explicitly even in a specimen which purports toshow use of a mark in the advertisement or promotion of theservices. See In re International Environmental Corp., 230Ser No. 782413967USPQ 688, 691 (TTAB 1986)(specimen showing use of mark insurveys used to promote service with no mention of“distributorship services” found acceptable). 

acceptable). In the caseof a specimen intended to show use of the mark in the saleor “rendering” of the service, the specimen need not andoften will not include an explicit reference to theservice. In re Metriplex Inc., 23 USPQ2d at 1316.See In re International Environmental Corp., 230Ser No. 782413967USPQ 688, 691 (TTAB 1986)(specimen showing use of mark insurveys used to promote service with no mention of“distributorship services” found acceptable). In the caseof a specimen intended to show use of the mark in the saleor “rendering” of the service, the specimen need not andoften will not include an explicit reference to theservice. In re Metriplex Inc., 23 USPQ2d at 1316.The examining attorney relies on In re Advertising &Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010(Fed. Cir. 1987). In that case the Federal Circuitreversed the Board’s affirmance of an examining attorney’srejection of a specimen for advertising services. Thecourt found that the applicant’s use of its mark incorrespondence with potential clients offering itsadvertising services was acceptable to show use for thepurpose of registration for advertising services, eventhough its clients also used the mark in the advertisementof their own services. Id. at 2015. 

service. Here again, the examining attorneyfails to consider the possiblity of use of the mark in theSer No. 782413968rendering of the advertising service, a type of use whichwas neither alleged nor considered in In re Advertising &Marketing Development Inc. Here, applicant’s markidentifies applicant as the source of the brochures, theadvertising vehicle in question, not the source of itsclient tenants’ goods and services. 

The facts before us are distinguishable from those inthe Admark case. Most importantly, the totality of therecord here establishes that the mark applicant seeks toregister is one applicant uses to identify its ownservices, in particular, its advertising services renderedon behalf of the tenant businesses. 

businesses. The record indicatesthat the mark, as used on the specimen, would be associatedwith applicant, the shopping center operator, by the tenantSer No. 782413969businesses, and with the advertising service rendered byapplicant for the benefit of those tenant businesses. 

In conclusion, applicant’s brochure, which itsubmitted as a substitute specimen, shows use of theapplied-for mark in the rendering of its advertisingservices in Class 35 for the benefit of its clients, thetenant businesses in its shopping center. 

 

 

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Notice of Appeal USPTO

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

 

In re the matter of:

                                                                        Trademark Examining Attorney

Infinito Art & Cultural Foundation, Inc.

                                                                        Priscilla Milton

U.S. Serial No.:  76599142                             

                                                                        Law Office 110

Filed:  June 24, 2004

 

Mark:  BRAZILIAN FILM FESTIVAL

 

BOX TTAB FEE

Commissioner for Trademarks

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

NOTICE OF APPEALAND REQUEST FOR SUSPENSION OF TIME FOR APPLICANT’S BRIEF ON APPEAL 

            Applicant, through its undersigned counsel, hereby appeals the Examining Attorney’s Final Office Action dated May 12, 2006.

            The Trademark Trial and Appeal Board is advised that Applicant filed a Request for Reconsideration after final refusal dated September 15, 2006.  To date, no response from the Examining Attorney has been received.

            It is believed that Applicant’s additional evidence and argument submitted to the Trademark Examiner will be accepted such that the Appeal will ultimately be moot.

            In view of the impending Appeal deadline, Applicant hereby submits its Appeal, but requests that the Trademark Trial and Appeal Board suspend the time for Applicant to submit its Brief until a reasonable time, preferably 60 days, after a decision is rendered by the Examining Attorney.

            The filing fee for the Notice of Appeal is $100.00 per class, and such fee is included herein.

                                                            Respectfully submitted,

 

                                                            _______________________________

                                                            Michael D. Stewart, Esq.
                                                            Law Offices of Michael D. Stewart
                                                           

335 S. Biscayne Blvd., #UPH00
                                                            Miami, Florida 33131

                                                            midstewart@gmail.com                                                             1-305-394-8546 Telephone
                                                            1-866-438-6574 Toll-free
                                                            1-866-380-8986 Facsimile

 

 

Mailed October 27, 2006

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574

Bad Check

CIVIL PRACTICE AND PROCEDURE Chapter 68
MISCELLANEOUS PROCEEDINGS
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68.065  Actions to collect worthless checks, drafts, or orders of payment; attorney’s fees and collection costs.

(1)  In any civil action brought for the purpose of collecting a check, draft, or order of payment, the payment of which was refused by the drawee because of the lack of funds, credit, or an account, or where the maker or drawer stops payment on the check, draft, or order of payment with intent to defraud, and where the maker or drawer fails to pay the amount owing, in cash, to the payee within 30 days following a written demand therefor, as provided in subsection (3), the maker or drawer shall be liable to the payee, in addition to the amount owing upon such check, draft, or order, for damages of triple the amount so owing. However, in no case shall the liability for damages be less than $50. The maker or drawer shall also be liable for any court costs and reasonable attorney fees incurred by the payee in taking the action. Criminal sanctions, as provided in s. 832.07, may be applicable.

(2)  The payee may also charge the maker or drawer of the check, draft, or order of payment a service charge not to exceed the service fees authorized under s. 832.08(5) or 5 percent of the face amount of the instrument, whichever is greater, when making written demand for payment. In the event that a judgment or decree is rendered, interest at the rate and in the manner described in s. 55.03 may be added toward the total amount due. Any bank fees incurred by the payee may be charged to the maker or drawer of the check, draft, or order of payment.

(3)  Before recovery under this section may be claimed, a written demand must be delivered by certified or registered mail, evidenced by return receipt, or by first-class mail, evidenced by an affidavit of service of mail, to the maker or drawer of the check, draft, or order of payment to the address on the check or other instrument, to the address given by the drawer at the time the instrument was issued, or to the drawer’s last known address. The form of such notice shall be substantially as follows:

“You are hereby notified that a check numbered _____ in the face amount of $_____ issued by you on  (date) , drawn upon  (name of bank) , and payable to _____, has been dishonored. Pursuant to Florida law, you have 30 days from receipt of this notice to tender payment in cash of the full amount of the check plus a service charge of $25, if the face value does not exceed $50, $30, if the face value exceeds $50 but does not exceed $300, $40, if the face value exceeds $300, or 5 percent of the face amount of the check, whichever is greater, the total amount due being $_____ and _____ cents. Unless this amount is paid in full within the 30-day period, the holder of the check or instrument may file a civil action against you for three times the amount of the check, but in no case less than $50, in addition to the payment of the check plus any court costs, reasonable attorney fees, and any bank fees incurred by the payee in taking the action.”

(4)  A subsequent person receiving a check, draft, or order, from the original payee or a successor endorsee has the same rights that the original payee has against the maker of the instrument, provided such subsequent person gives notice in a substantially similar form to that provided above. A subsequent person providing such notice shall be immune from civil liability for the giving of such notice and for proceeding under the forms of such notice, so long as the maker of the instrument has the same defenses against the subsequent person as against the original payee. However, the remedies available under this section may be exercised only by one party in interest.

(5)  Subsequent to the commencement of the action but prior to the hearing, the maker or drawer may tender to the payee, as satisfaction of the claim, an amount of money equal to the sum of the check, the service charge, court costs, and incurred bank fees. Other provisions notwithstanding, the maker or drawer is liable to the payee for all attorney fees and collection costs incurred by payee as a result of the payee’s claim.

(6)  If the court or jury determines that the failure of the maker or drawer to satisfy the dishonored check was due to economic hardship, the court or jury has the discretion to waive all or part of the statutory damages.

 

The Law Offices of Michael D. Stewart
TheMiamiLaw.com
305-590-8909
866-438-6574