Response to Office Action

      This responds to the Final Office Action dated August 31, 2004 and requests reconsideration thereof.

      The Examining Attorney has finally refused registration of the mark on the Principal Register under Trademark Act Section 2(d), contending that the mark, when used on the identified goods, is likely to cause confusion with respect to the mark in U.S. Registration No. 2,366,333 ('333 Registration).

      As an initial matter, it is noted that the record now reflects Applicant's claim of acquired distinctiveness of the mark.

      It is also noted that the record has now been duly revised to reflect Applicant's common ownership of the mark in U.S. Registration No. 1,504,172 for the mark WILLIAMS (at least this is how it appears on the PTO's web site).  However, no affirmative acknowledgement of same was made by the Examining Attorney in her August 31, 2004 office action.  This is curious, in that the initial refusal was based in part on Applicant's own earlier registration.  Whether the omission was through oversight or other reason is unclear, as no discussion was provided.

      In any event, it is suggested that a closer examination of the record may be warranted and that the Examiner may be persuaded that the refusal to register may have been improper after all.  Applicant has obtained and inspected the prosecution file history of the trademark application underlying the cited '333 Registration for the mark WILLIAMS (in stylized format).  As in the present case, that application was refused registration, in part, under §2(d) as being likely to cause confusion with Registration No. 1,504,172 (see Applicant's Exhibit A).  As is now apparent from the record and discussed above, that registration is owned by Applicant. 

      In its response (see Applicant's Exhibit B), the applicant of the '333 registration amended the identification of goods to exclude items that might be construed as being closely related to the goods of Applicant's earlier registration.  Specifically, "gravy" was deleted from the application, and the '333 Registration applicant stated that it would only use its mark on sausage, bacon and ham.  Also, the '333 Registration applicant presented arguments downplaying the relatedness of the remaining goods in its application with those cited in Registration No. 1,504,172.  It argued that its sausage, bacon and ham products would not likely be perceived by consumers as emanating from a common source that marketed "food seasonings; sauces excluding cranberry sauce and apple sauce; packaged casserole food products consisting primarily of pasta with seasoning and spice mixes and gravy mixes."  These arguments were successful as the Examining Attorney withdrew the refusal to register and passed the application to registration.

      Focusing again on the present application, it can be seen that the goods listed under Class 30 are identical to those listed in Applicant's prior Registration No. 1,504,172.  Therefore, the §2(d) refusal of that class of goods is not well taken in view of the events discussed above.  It is respectfully requested that the Examining Attorney withdraw her refusal to register with respect to those goods.

      Furthermore, the other goods identified in the application (diced tomatoes and processed beans in Class 29) are no more closely related to sausage, bacon and ham in the '333 Registration than the Class 30 goods.  In fact, the goods in the present application are far more closely related to each other than to sausage, bacon and ham.

      While admittedly not a consent agreement per se, those principles applicable in determining likelihood of confusion are analogous to the present situation given the arguments presented by the party in the '333 Registration in overcoming its refusal to register.  As recognized by the Federal Circuit, those most closely involved and familiar with the marketplace in which the respective goods travel are in the best position to assess the issue of likelihood of confusion.  In re E.I. Du Pont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973).  Furthermore, the PTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, and unless other factors clearly indicate a finding of likelihood of confusion.  Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 6 USPQ2d 1305 (Fed. Cir. 1988).  (See also TMEP §1207.01(D)(VIII).)

      It is therefore requested that the refusal to register be withdrawn, and the application be passed on for registration on the Principal Register.

      Applicant reserves its right to appeal this matter, and a notice of appeal to the Trademark Trial and Appeal Board is being made and filed concurrently with this request for reconsideration.