IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:
WARRIOR LACROSSE, INC.
Serial No. 76/467,756 Examining Attorney: Shari Sheffield
Filed: November 18, 2002 Law Office: 110
Mark: SUPERSTAR
Attorney Docket No: WLI 1088 TUS
I hereby certify that this correspondence is being transmitted by facsimile (703-746-8110) to the United States Patent and Trademark Office on the date shown below.
October 23, 2003 Jo Anne Croskey /Jo Anne Croskey/
Date of Deposit Signature
RESPONSE TO OFFICE ACTION
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513
Sir:
This is in response to the Office Action mailed April 23, 2003. This response is timely filed as it is being submitted within the six (6) month period set for response.
REMARKS
The Examining Attorney refused registration under Section 2(d) of the Trademark Act because, in the Examiner's opinion, the Applicant's mark, when used on or in connection with the identified goods is likely to be confused with the marks in Registration Nos. 2,616,193 and 2,144,066.
Amendment To The Identification Of Goods:
Please amend the identification of goods to read as follows:
PROTECTIVE LACROSSE EQUIPMENT, NAMELY GLOVES
Registration No. 2,616,193
U.S. Registration No. 2,616,193 is for the mark JUNIOR SUPERSTAR, which is for use in connection generally with "sporting goods, namely soccer balls, footballs, baseball bats and balls, baseball gloves, basketballs, golf sets comprised of golf clubs, golf balls, golf tees, and a golf bag, tennis sets comprised of a tennis racket and tennis ball, street hockey sets comprised of hockey sticks, a hockey ball and goal, and boxing sets comprised of a punching bag and boxing gloves." On the other hand, the Applicant's SUPERSTAR mark is for use in connection with lacrosse equipment. It is submitted that there is no possible likelihood of confusion between the mark cited by the Examiner and the Applicant's mark, for at least the reasons described below.
Applicant's mark SUPERSTAR mark is substantially different in appearance, sound, and meaning than the registered mark for JUNIOR SUPERSTAR. Specifically, U.S. Registration No. 2,616,193 is for the mark JUNIOR SUPERSTAR in its entirety whereas the Applicant's mark is merely for the SUPERSTAR mark in its entirety. In other words, the Applicant's mark clearly lacks the JUNIOR term. Thus, the marks in their entirety substantially differ in sound and appearance.
Moreover, the mark JUNIOR SUPERSTAR connotes items intended for use by younger and/or smaller-sized individuals. However, the Applicant's mark SUPERSTAR does not suggest any such limitation. Instead, the Applicant's mark conveys a meaning of an extremely prominent and skilled athlete, regardless of his age or size. For this reason, the marks have substantially different meanings.
Also, the goods offered under the marks are substantially different. Although both goods offered under the parties' marks can be broadly characterized as sporting goods, they cannot be considered to be related. The sporting goods offered under the JUNIOR SUPERSTAR mark relates to sporting goods, as enumerated above, which fail to specify lacrosse equipment. Conversely, the goods to be used under the Applicant's mark are lacrosse protective equipment, namely lacrosse gloves.
In addition, the goods under each of the marks are offered to distinctly different groups of customers. In particular, the goods identified by the Applicant's mark are offered to participants in the game of lacrosse. However, the goods identified by the JUNIOR SUPERSTAR mark are offered to participants of other sports besides lacrosse. A reasonable person can understand the significant differences between the rules, the equipment, and all other aspects of lacrosse and other sports.
For at least the reasons above, it is respectfully submitted that there is no likelihood of confusion between Applicant's mark SUPERSTAR and the registered mark JUNIOR SUPERSTAR. Accordingly, it is requested that the refusal to register based on this registration should be withdrawn.
Registration No. 2,144,066
U.S. Registration No. 2,144,066 is for the mark SUPERSTAR, which is for use in connection generally with "retail store services in the field of athletic footwear, clothing, equipment, and related accessories." On the other hand, the Applicant's SUPERSTAR mark is for use in connection with lacrosse equipment. It is submitted that there is no possible likelihood of confusion between the mark cited by the Examiner and the Applicant's mark, for at least the reasons described below.
Moreover, the two marks are used in connection with two substantially different types of commerce. In particular, the Applicant's mark is used in connection with a good, namely protective lacrosse equipment. However, the SUPERSTAR mark cited by the Examiner is used in connection with a service, namely retail store services. In this way, the mark by the Examiner is not registered for use in connection with the actual athletic equipment, e.g. lacrosse protective equipment.
For at least the reasons above, it is respectfully submitted that there is no likelihood of confusion between Applicant's mark SUPERSTAR and the registered mark SUPERSTAR. Accordingly, it is requested that the refusal to register based on this registration should be withdrawn.
Conclusion:
It is respectfully submitted that all objections and rejections of record have been overcome and that the above-identified Application is in a condition for allowance. A Notice of Allowability is therefore respectfully requested.
If the Examining Attorney should have any questions, he is urged to contact the undersigned at (248) 223-9500.
Respectfully submitted,
ARTZ & ARTZ. P.C.
/Vincent C. Ilagan/
Vincent C. Ilagan
Reg. No. 53,053
28333 Telegraph Road, Ste. 250
Southfield, MI 48034
Attorney for Applicant(s)
Date: October 23, 2003
Jo Anne Croskey
Artz & Artz, P.C.
28333 Telegraph, Ste. 250
Southfield, MI 48034
248-223-9500
248-223-9522 (fax)