| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76586577 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
As described in DuPont, to determine whether consumer confusion is likely the following factors must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) 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. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i. e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.
Application Of E. I. Dupont Denemours & Co., 177 U.S.P.Q. 563, 476 F.2d 1357 (C.C.P.A. 1973) (In DuPont, the court allowed the registration of and simultaneous use of the mark RALLY for two cleaning products produced by different companies. DuPont used RALLY for an aftermarket automobile cleaning product, and a second company used the same mark on general household cleaning products).
Applicant agrees with Examiner that the marks are identical, and that under these circumstances, the goods do not need to be as closely related; however, Applicant respectfully submits that differences between the goods sold under these marks, and other factors, make consumer confusion unlikely and weigh in favor of registration. .
In the present application, the mark is used in conjunction with the sale of coffee, while in the prior registration the mark is used in conjunction with the sale of coffee mugs. While coffee superficially sounds related to coffee mugs, they are in fact two entirely different markets, with entirely different consumers.
The prior registration of DAYSPRING is to David C. Cook Publishing Co., a manufacturer of gift items, greeting cards, etc., and a copy of their web site is attached as an Exhibit to illustrate the nature of the business. Their market consists of small gift shops, especially Christian gift shops, that want to carry their gift items, cards, etc. It is unlikely that the general coffee-drinking public would be aware that there is a manufacturer of gift items that uses the mark DAYSPRING, and it is even less likely that they would think that such a manufacturer was in any way associated with a manufacturer of coffee.
In addition to the differences in the goods, and the entirely different channels of trade, other factors also weigh heavily in favor of registration.
Another important factor includes the number and nature of similar marks in use on similar goods. The term "dayspring" is a reference to Christ that is very common in Christian circles, and this is reflected in the large number of prior registrations for the mark. Even more astounding is the extremely broad usage of the term in commerce. There are a huge number of commercial uses of the term "dayspring", including DAYSPRING ACADEMY, DAYSPRING pen shop and engraving, DAYSPRING TECHNOLOGIES (web design), various churches, DAYSPRING housekeeping, DAYSPRING bed and breakfast, DAYSPRING Christian counseling, DAYSPRING online store, and many others.
Given the many competing uses of this common term, the current registrants should not be afforded an overly broad scope of protection. Given the differences in the goods, the different channels of trade, and the narrow scope of protection to which registrant is entitled, Application respectfully submits that the present application should be allowed to proceed to registration. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT10\IMAGEOUT 10\765\865\76586577\xml1\ ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Web site of prior registrant, illustrating that the prior registrant primarily sells to small Christian bookstores and similar gift stores |
| GOODS AND/OR SERVICES SECTION (no change) | |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /eric karich/ |
| SIGNATORY NAME | Eric Karich |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 05/03/2005 |
| RESPONSE SIGNATURE | /eric karich/ |
| SIGNATORY NAME | Eric Karich |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 05/03/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 03 19:52:40 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXX-2005 0503195240787088-76586577 -2003fd8b97e5629c6ae6431f ee637fd259e-N-N-200505031 95133949439 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76586577 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
As described in DuPont, to determine whether consumer confusion is likely the following factors must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) 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. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i. e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.
Application Of E. I. Dupont Denemours & Co., 177 U.S.P.Q. 563, 476 F.2d 1357 (C.C.P.A. 1973) (In DuPont, the court allowed the registration of and simultaneous use of the mark RALLY for two cleaning products produced by different companies. DuPont used RALLY for an aftermarket automobile cleaning product, and a second company used the same mark on general household cleaning products).
Applicant agrees with Examiner that the marks are identical, and that under these circumstances, the goods do not need to be as closely related; however, Applicant respectfully submits that differences between the goods sold under these marks, and other factors, make consumer confusion unlikely and weigh in favor of registration. .
In the present application, the mark is used in conjunction with the sale of coffee, while in the prior registration the mark is used in conjunction with the sale of coffee mugs. While coffee superficially sounds related to coffee mugs, they are in fact two entirely different markets, with entirely different consumers.
The prior registration of DAYSPRING is to David C. Cook Publishing Co., a manufacturer of gift items, greeting cards, etc., and a copy of their web site is attached as an Exhibit to illustrate the nature of the business. Their market consists of small gift shops, especially Christian gift shops, that want to carry their gift items, cards, etc. It is unlikely that the general coffee-drinking public would be aware that there is a manufacturer of gift items that uses the mark DAYSPRING, and it is even less likely that they would think that such a manufacturer was in any way associated with a manufacturer of coffee.
In addition to the differences in the goods, and the entirely different channels of trade, other factors also weigh heavily in favor of registration.
Another important factor includes the number and nature of similar marks in use on similar goods. The term "dayspring" is a reference to Christ that is very common in Christian circles, and this is reflected in the large number of prior registrations for the mark. Even more astounding is the extremely broad usage of the term in commerce. There are a huge number of commercial uses of the term "dayspring", including DAYSPRING ACADEMY, DAYSPRING pen shop and engraving, DAYSPRING TECHNOLOGIES (web design), various churches, DAYSPRING housekeeping, DAYSPRING bed and breakfast, DAYSPRING Christian counseling, DAYSPRING online store, and many others.
Given the many competing uses of this common term, the current registrants should not be afforded an overly broad scope of protection. Given the differences in the goods, the different channels of trade, and the narrow scope of protection to which registrant is entitled, Application respectfully submits that the present application should be allowed to proceed to registration. |
|
| Evidence | |
| Evidence in the nature of Web site of prior registrant, illustrating that the prior registrant primarily sells to small Christian bookstores and similar gift stores has been attached. | |
| Evidence-1 | |
| Additional Statements | |
| The mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /eric karich/ Date: 05/03/2005 | |
| Signatory's Name: Eric Karich | |
| Signatory's Position: Attorney | |
| Response Signature | |
| Signature: /eric karich/ Date: 05/03/2005 | |
| Signatory's Name: Eric Karich | |
| Signatory's Position: Attorney | |
| Serial Number: 76586577 | |
| Internet Transmission Date: Tue May 03 19:52:40 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2005050319524078708 8-76586577-2003fd8b97e5629c6ae6431fee637 fd259e-N-N-20050503195133949439 |
