In the United States Patent and Trademark Office
Trademark Examining Operation

Applicant: Winged Horse Records, LLC
Filing Date: 1/4/2007 Y. Isadora Lee
Serial No.: 77/076069 Examining Attorney
Mark: WINGED HORSE RECORDS Law Office 107

RESPONSE

Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202—3513

RESPONSE

Dear Sir,

In an Office Action of the Examining Trademark Attorney with
an e—mailing date of April 26, 2007 the Examining Attorney
required that the Applicant disclaim the wording “RECORDS” apart
from the mark in the above referenced trademark application as
such term is asserted to be descriptive. In response please
amend the above referenced trademark application to include the
following disclaimer:

No claim is made to the exclusive right to use “RECORDS”
apart :rom the mark as shown.

Additionally the Examining Attorney refused registration of
the above identified trademark application pursuant to Section
2(d) of the Trademark Act asserting that there is a likelihood of
confusion with U.S. Trademark Registrations 1647966 and 3030593.
Trademark registrations 1647966 and 3030593 are both stylized
design images of Pegasus, a winged horse from greek mythology.

In part, the Examiner asserts that the goods of the
Applicant are closely related to those contained in the cited
registrations in that they include musical sound recordings that
are likely to travel in the same channels of trade to the same
class of consumers. It is acknowledged by the applicant that the
goods as currently recited in the present application and the
cited registrations contain closely related goods that may travel
in similar channels of trade to the same class of consumers.

Further, the Examining Attorney asserts that the connotation
and commercial impression conveyed by the applicant’s mark and
the cited registrations are the same. In reaching this
assertion, the examiner dissected the applicant’s mark
disregarding “RECORDS” to arrive at “WINGED HORSE” as the
significant pa rt of th e ap pl ic an t’ s ma rk . Fr om th er e, th e
Examiner applie d the doc tri ne of leg al equ iva len ts ass ert ing tha t
the applied for mar k is the lit era l equ iva len t of the pic tor ial
representations of the cited marks.

The Applicant contends that the Examining Attorney is in
error in fin din g the mar ks to be the sam e or eve n con fus ing ly
sim ila r. The exa min er ina ppr opr iat ely app lie d the doc tri ne of
lega l eq ui va le nt s to a di ss ec ti on of th e Ap pl ic an t’ s ma rk to
arrive at a conclusion that the applicants mark is the same as
the cited reg ist rat ion s. Whi le it is rec ogn ize d tha t the re may
be des cri pti ve wor ds inc orp ora ted int o a mar k and tha t the re may
be a dominant portion of a mark, the mark cannot be dissected to
disregard the descriptive terms, but must be looked upon as a
whole. In re Nat ion al Dat a Cor p., 753 F.2 d 105 6 (Fe d. Cir .
1985). Additi ona lly , the doc tri ne of leg al equ iva len ts is not a
tool to be literally and indiscriminately used without
considera tio n of the mar ks inv olv ed. Spa uld ing Bak eri es Inc . v.
Inters tat e Bra nds Cor p., 209 USP Q 355 (TT AB 198 0), In re Har ry N.
Abr ams , Inc ., 223 USP Q 832 (TT AB 198 4). The inq uir y in
determining lik eli hoo d of con fus ion bet wee n a wor k mar k and a
design mark is not merely whether the design mark is an
equiva len t rep res ent ati on of the wor d mar k, but rat her wou ld the
pictoral representation be recognized by consumers as the
equivalent of the literal term of the word mark, and is the
design mark of such a nature that consumers would be inclined to
tra nsl ate the des ign int o the wor d mar k. See Spa uld ing Bak eri es,
Inc. v. Interstate Brands Corp. The registrations cited by the
Examining attorney against the above referenced application are
fanciful depictions of Pegasus the winged horse from greek
mythology. Such fanciful depictions of Pegasus are commonplace
and consumers are likely to View the design marks of the cited
references as nothing more than logos without any inclination to
translate them into a descriptive term; and even if consumers
were asked to describe the depiction in the cited rcfcrencos,
they are likely to identify the design as Pegasus from greek
mythology rather than a winged horse.

Further, in application of the doctrine of legal equivalents
the word mark would have to be the literal equivalent of the
pictoral representation in the cited design mark registrations in
order to be found confusingly similar. TMEP Section
1207.01(c)(i). In requiring the literal equivalent there is no
allowance for dissecting the word mark and considering only the
.C
more signilicant portion of the mark.

Finally, it must be considered that there are many marks
utilizing the term “PEGASUS” or the Pegasus design (Design Search
Code 04.05.03 Horses, winged(Pegasus); Pegasus (winged horse)
within International Class 009, including U.S. Trademark
Registration 1905368 to TriStar Pictures, Inc. which is a design
mark with a stylized depiction of Pegasus upon some 0: the same
goods as the cited 1647966 and 3030593 Registrations (prerecorded
audio tapes, discs and cassettes featuring musical and spoken
performances. As such it should be recognized that consumers are
accustomed to seeing various versions of the Pegasus design and
Pegasus word marks on the same or similar products and the
applicant’s use of “WINGED HORSE RECORDS” in such an environment
is not likely to result in consumer confusion between the source
of the applicants goods and those of the cited registrations

For the forgoing reasons, it is submitted that the above
identified trademark application is in position for publication
and allowance; and reconsideration of the application is
requested

Respectfully submitted,

ij
William J. Quinn
Attorney for Applicant
6901 S. Pierce Street
Suite lOOH
Littleton, CO 80128
(303) 794—3200