SUSTAINABLE GROUP

Serial Number: 77728137

RESPONSE TO OFFICE ACTION

I. Introduction

Applicant Sustainable Group Holdings LLC (“SGH”) is a Washington corporation that intends to
use the mark “SUSTAINABLE GROUP” (and design) in connection with office supplies, cd and dvd
cases, and printing services. SGH owns a registration (#3506731) on the supplemental register for
“SUSTAINABLE GROUP” with a slightly different design (“Prior Registration”).

The Examining Attorney has denied registration because of the mark “SUSTAINABLE GROUP”
because he believes the mark is likely to cause confusion with: (a) SGH?s Prior Registration; and (b) the
mark “SUSTAINABLE” (registration # 79018764) which is owned by another company.

In this Response to Office Action, SGH will assert that “SUSTAINABLE GROUP” should be
granted registration because the mark is not likely to cause confusion with SGH?s Prior Registration or
with the mark “SUSTAINABLE” which is owned by another company

II. Substantive Response

The Examining Attorney has raised the issue “that a potential consumer would be confused or
mistaken or deceived as to the source of the good and/or services of the applicant and registrant” as a bar
to registration for the mark “SUSTAINABLE GROUP” (and design). In this Section, SGH will assert
that “SUSTAINABLE GROUP” is not likely to cause confusion with either of the registered marks cited
by the Examining Attorney as a bar to registration, because: (A) one mark cited by the Examining
Attorney, the Prior Registration, is owned by SGH; and (B) the other marked cited by the Examining
Attorney, “SUSTAINABLE,” already exists without confusion to consumers with the Prior Registration
(which is nearly identical to the mark SGH seeks to register).

(A) “SUSTAINABLE GROUP” is not likely to cause confusion with the Prior
Registration, because both are owned by SGH.

The Examining Attorney has raised the Prior Registration as a potential bar to SGH?s
registration of “SUSTAINABLE GROUP” because of the likelihood of confusion to potential
consumers regarding the source of good and/or services. SGH owns both marks. Therefore, there
can be no confusion regarding the source of the goods and services, because the source in both
instances is the same.

(B) “SUSTAINABLE GROUP” is not likely to create confusion in connection with
“SUSTAINABLE,” because both word marks already exist without confusion and
have been granted registrations.

SGH?s current registration for “SUSTAINABLE GROUP” (registration #3506731) and
Sustainable Australia Pty Ltd Propriety Limited Company?s registration for “SUSTAINABLE”
(registration #79018764) already exist without consumer confusion, as evidenced by the fact that
they are both registered in class 016. SGH?s prior registration of “SUSTAINABLE GROUP”
contains the words plus a circular arrow design; the registration SGH now seeks for
“SUSTAINABLE GROUP” contains the words plus a circular leaf design: therefore, the marks
are almost identical (except for a slight modification in the design). Because the mark SGH now
seeks to register is nearly identical to the mark for which it has already been granted a
registration, SGH asserts there is no likelihood of confusion.

III. Conclusion

For the reason cited above, SGH concludes that there is no likelihood of confusion between
„SUSTAINABLE GROUP” and the marks cited by the Examining Attorney. SGH respectfully requests
that the Examining Attorney approve SGH?s mark for publication.

SGH requests the right to respond to the Examining Attorney?s request for a disclaimer and
modification to the description of goods and services after the Examining Attorney makes a determination
regarding the likelihood of confusion issues addressed in this Response to Office Action.

DATED 4th day of March, 2010

Respectfully submitted,

VANDEBERG JOHNSON GANDARA

Stacey A. Walters

Of Attorneys for Sustainable Group Holdings LLC