| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76635983 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION
Assistant Commissioner for Trademarks BOX RESPONSES NO FEE P.O. BOX 1451 Alexandria, Virginia 22313-1451
Dear Ms. Fromm: Responsive to Office Action Number 1, mailed November 14, 2005, Applicant responds as follows: REMARKSThe Primary Examiner has refused registration of the mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2652999 as to be likely to cause confusion, to cause mistake, or to deceive. The Examiner cites In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) for the proposition that the Examining Attorney must compare the marks for similarities in sound, appearance, meaning, connotation or commercial impression. The applicant submits that the marks are similar in sound, appearance, meaning and connotation. The Examining Attorney next asserts that “the goods or services are compared to determine whether the activities surrounding their marketing are such that confusion as to origin is likely.” citing In re August Storck KG, 218 USPQ 823 (TTAB 1983) and other cases. The examining attorney further asserts “if the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.” Citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ 2d 1698, 1701 (Fed.Cir.1992), cert. Denied 506 U.S. 1034 (1992). The applicant respectfully asserts that the goods of applicant’s mark and the services of the registrant’s mark are sufficiently different such that confusion as to origin is NOT likely. The applicant seeks to register the mark GAZELLE for use on watches; whereas, the registrant cited by the examining attorney has registered GAZELLE for services identified as retail store services in the fields of clothing, home décor, and jewelry. The examining attorney states that “the subject matter of the registrant’s services is broadly stated and could encompass watches.” The examining attorney includes a sampling of third party registrations as evidence that watches are commonly considered to be a type of jewelry. The applicant disagrees that watches are commonly considered to be a type of jewelry. Watches are timepieces, whereas, jewelry are items of adornment made of precious or semi-precious metals or stones. There are even more numerous of sampling of third party registrations which clearly distinguishes watches and jewelry as separate items as follows: 1.) Registration 3090491 for BLUE NIGHT for goods IC 014. US 002 027 028 050. G & S: Precious metals and alloys thereof sold in bulk; jewelry; precious stones; timepieces and chronometric instruments, namely watches, wristwatches, chronometers, clocks, table clocks 2.) Registration 3090444 for LUST for goods IC 014. US 002 027 028 050. G & S: Jewelry, pearls, jewelry made with pearls; items of personal adornment made both with and without pearls, namely watches, wrist watches, watch chains, watch straps, watch bands, tie pins, tie clips; buckles made of precious metal; buckles made of precious metal and pearls; bracelets, necklaces, earrings, rings, jewelry chains, jewelry pendants, jewelry amulets, cuff links, body piercing rings and studs; personal trinkets made of precious metals, namely, brooches; key rings made of precious metals; hair ornaments made wholly of precious metals 3.) Registration 3083059 for EUGENE RENARD for goods IC 014. US 002 027 028 050. G & S: Watches, clocks, horological and chronometric instruments; jewelry, cuff links, tie pins; parts and fittings for all of the aforesaid goods 4.) Registration 3076827 for JORGE REVILLA for goods IC 014. US 002 027 028 050. G & S: Precious metals and their alloys; goods made of or coated with precious metals, namely, necklaces, pendants, rings, bracelets, earrings, and ash trays; jewelry, precious stones; chronometric instruments, namely, watches, timepieces and clocks. The applicant points out to third party registrations where registrations for goods have been allowed and registered even in light of the existence of a prior registration for services which surround similar or same goods. For instance, registration no. 0981376 for BIG BEAR for Retail Grocery Store Services was registered on March 26, 1974. Even in light of this registration, subsequently in August 3, 2004, registration no. 2868875 for BIG BEAR was allowed for the goods Beer. Arguably, retail grocery stores sell large quantities of drinks and beverage including beer. The two registrations are for BIG BEAR, and the subject matter of the mark BIG BEAR for retail grocery store services is broadly stated and could encompass BEER; however, in this prior instance, the USPTO allowed the registration of BIG BEAR for beer even in light of the prior existence of registration for BIG BEAR for retail grocery store services. Similarly, here, although there is a prior existence of GAZELLE for retail store services which could possibly encompass watches, the USPTO should allow applicant’s mark for GAZELLE for the goods watches as it allowed the registration of BIG BEAR for beer. The applicant points out to other third party registrations where registrations for services have been allowed and registered even in light of the existence of a prior registration for goods which surround similar or same goods encompassed in the services. For instance, registration no. 1988139 for TIGER for computer software for use in the banking industry was registered on July 23, 1996. Even in light of this registration, subsequently in January 8, 2002, registration no. 2526739 also for TIGER was allowed for the services which included Retail store services featuring computers and computer related products. Arguably, retail store services featuring computers and computer related products encompasses the goods for computer software for use in the banking industry. The two registrations are for TIGER, and the subject matter of the mark TIGER for retail store services featuring computers and computer related products could encompass computer software for use in the banking industry; however, in this prior instance, the USPTO allowed the registration of BIG BEAR for the retail store services even in light of the prior existence of registration for TIGER for computer software. In another example, registration no. 2444589 for DANIEL K for JEWELRY was registered on January 23, 2001. Even in light of this registration, subsequently in February 4, 2003, registration no. 2683380 filed April 22, 2002 for DANIEL’S was allowed for the services which included Retail store services featuring jewelry. Arguably, retail store services featuring jewelry encompasses the goods for jewelry. The two registrations are for DANIEL’S and DANIEL K, and the subject matter of the mark DANIEL’S for retail store services featuring jewelry does clearly encompass jewelry; however, in this prior instance, the USPTO allowed the registration of DANIEL’S for the retail store services even in light of the prior existence of registration for DANIEL K for jewelry. Similarly, here, although there is a prior existence of GAZELLE for retail store services which could possibly encompass watches, the USPTO should allow applicant’s mark for GAZELLE for the goods watches as it allowed the registration of TIGER and DANIEL K. Moreover, applicant’s current case is similar to the situation in In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001) wherein AMAZON for hot sauces and AMAZON for restaurant services were not held to be confusingly similar by the TTAB. Restaurant services covers all sorts of foods including hot sauces, and as such, using the rationale of the examining attorney made in the office action, restaurant services is broadly stated and could encompass hot sauces. However, the TTAB in In re Comexa Ltda, Id. found that consumers are not likely to be confused between AMAZON for restaurant services and AMAZON for hot sauces. Applying the findings of the TTAB in In re Comexa Ltda, consumers are not likely to be confused between GAZELLE for retail store services featuring numerous goods including jewelry and GAZELLE for watches even when assuming that retail store services featuring goods including jewelry could be considered broadly stated to encompass watches. These examples for the registration of AMAZON, TIGER, DANIEL K, and BIG BEAR, shows that the USPTO has taken a consistent position that consumers are not likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods and asks for a consistent application of said position in the instant case to pass applicant’s mark to publication. For the above reasons, the applicant asserts that the subject mark is not likely to be confused with the registered mark and the pending mark cited by the Examiner and urges that the applicant’s mark be allowed and passed to publication. Respectfully submitted,
Dated: May 11, 2006 By: /Jason Lie/ Jason Lie Attorney for Applicant |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jason Lie/ |
| SIGNATORY NAME | Jason Lie |
| SIGNATORY POSITION | attorney |
| SIGNATURE DATE | 05/11/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 12 01:20:35 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0060512012035314238-76635 983-332299b54479498dec233 3f6318f681f64-N/A-N/A-200 60512011313278650 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
RESPONSE TO OFFICE ACTION
Assistant Commissioner for Trademarks
BOX RESPONSES NO FEE
P.O. BOX 1451
Alexandria, Virginia 22313-1451
Dear Ms. Fromm:
Responsive to Office Action Number 1, mailed November 14, 2005, Applicant responds as follows:
The Primary Examiner has refused registration of the mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2652999 as to be likely to cause confusion, to cause mistake, or to deceive. The Examiner cites In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) for the proposition that the Examining Attorney must compare the marks for similarities in sound, appearance, meaning, connotation or commercial impression.
The applicant submits that the marks are similar in sound, appearance, meaning and connotation.
The Examining Attorney next asserts that “the goods or services are compared to determine whether the activities surrounding their marketing are such that confusion as to origin is likely.” citing In re August Storck KG, 218 USPQ 823 (TTAB 1983) and other cases. The examining attorney further asserts “if the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.” Citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ 2d 1698, 1701 (Fed.Cir.1992), cert. Denied 506 U.S. 1034 (1992). The applicant respectfully asserts that the goods of applicant’s mark and the services of the registrant’s mark are sufficiently different such that confusion as to origin is NOT likely. The applicant seeks to register the mark GAZELLE for use on watches; whereas, the registrant cited by the examining attorney has registered GAZELLE for services identified as retail store services in the fields of clothing, home décor, and jewelry. The examining attorney states that “the subject matter of the registrant’s services is broadly stated and could encompass watches.” The examining attorney includes a sampling of third party registrations as evidence that watches are commonly considered to be a type of jewelry. The applicant disagrees that watches are commonly considered to be a type of jewelry. Watches are timepieces, whereas, jewelry are items of adornment made of precious or semi-precious metals or stones. There are even more numerous of sampling of third party registrations which clearly distinguishes watches and jewelry as separate items as follows: 1.) Registration 3090491 for BLUE NIGHT for goods IC 014. US 002 027 028 050. G & S: Precious metals and alloys thereof sold in bulk; jewelry; precious stones; timepieces and chronometric instruments, namely watches, wristwatches, chronometers, clocks, table clocks 2.) Registration 3090444 for LUST for goods IC 014. US 002 027 028 050. G & S: Jewelry, pearls, jewelry made with pearls; items of personal adornment made both with and without pearls, namely watches, wrist watches, watch chains, watch straps, watch bands, tie pins, tie clips; buckles made of precious metal; buckles made of precious metal and pearls; bracelets, necklaces, earrings, rings, jewelry chains, jewelry pendants, jewelry amulets, cuff links, body piercing rings and studs; personal trinkets made of precious metals, namely, brooches; key rings made of precious metals; hair ornaments made wholly of precious metals 3.) Registration 3083059 for EUGENE RENARD for goods IC 014. US 002 027 028 050. G & S: Watches, clocks, horological and chronometric instruments; jewelry, cuff links, tie pins; parts and fittings for all of the aforesaid goods 4.) Registration 3076827 for JORGE REVILLA for goods IC 014. US 002 027 028 050. G & S: Precious metals and their alloys; goods made of or coated with precious metals, namely, necklaces, pendants, rings, bracelets, earrings, and ash trays; jewelry, precious stones; chronometric instruments, namely, watches, timepieces and clocks.
The applicant points out to third party registrations where registrations for goods have been allowed and registered even in light of the existence of a prior registration for services which surround similar or same goods. For instance, registration no. 0981376 for BIG BEAR for Retail Grocery Store Services was registered on March 26, 1974. Even in light of this registration, subsequently in August 3, 2004, registration no. 2868875 for BIG BEAR was allowed for the goods Beer. Arguably, retail grocery stores sell large quantities of drinks and beverage including beer. The two registrations are for BIG BEAR, and the subject matter of the mark BIG BEAR for retail grocery store services is broadly stated and could encompass BEER; however, in this prior instance, the USPTO allowed the registration of BIG BEAR for beer even in light of the prior existence of registration for BIG BEAR for retail grocery store services. Similarly, here, although there is a prior existence of GAZELLE for retail store services which could possibly encompass watches, the USPTO should allow applicant’s mark for GAZELLE for the goods watches as it allowed the registration of BIG BEAR for beer.
The applicant points out to other third party registrations where registrations for services have been allowed and registered even in light of the existence of a prior registration for goods which surround similar or same goods encompassed in the services. For instance, registration no. 1988139 for TIGER for computer software for use in the banking industry was registered on July 23, 1996. Even in light of this registration, subsequently in January 8, 2002, registration no. 2526739 also for TIGER was allowed for the services which included Retail store services featuring computers and computer related products. Arguably, retail store services featuring computers and computer related products encompasses the goods for computer software for use in the banking industry. The two registrations are for TIGER, and the subject matter of the mark TIGER for retail store services featuring computers and computer related products could encompass computer software for use in the banking industry; however, in this prior instance, the USPTO allowed the registration of BIG BEAR for the retail store services even in light of the prior existence of registration for TIGER for computer software. In another example, registration no. 2444589 for DANIEL K for JEWELRY was registered on January 23, 2001. Even in light of this registration, subsequently in February 4, 2003, registration no. 2683380 filed April 22, 2002 for DANIEL’S was allowed for the services which included Retail store services featuring jewelry. Arguably, retail store services featuring jewelry encompasses the goods for jewelry. The two registrations are for DANIEL’S and DANIEL K, and the subject matter of the mark DANIEL’S for retail store services featuring jewelry does clearly encompass jewelry; however, in this prior instance, the USPTO allowed the registration of DANIEL’S for the retail store services even in light of the prior existence of registration for DANIEL K for jewelry. Similarly, here, although there is a prior existence of GAZELLE for retail store services which could possibly encompass watches, the USPTO should allow applicant’s mark for GAZELLE for the goods watches as it allowed the registration of TIGER and DANIEL K.
Moreover, applicant’s current case is similar to the situation in In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001) wherein AMAZON for hot sauces and AMAZON for restaurant services were not held to be confusingly similar by the TTAB. Restaurant services covers all sorts of foods including hot sauces, and as such, using the rationale of the examining attorney made in the office action, restaurant services is broadly stated and could encompass hot sauces. However, the TTAB in In re Comexa Ltda, Id. found that consumers are not likely to be confused between AMAZON for restaurant services and AMAZON for hot sauces. Applying the findings of the TTAB in In re Comexa Ltda, consumers are not likely to be confused between GAZELLE for retail store services featuring numerous goods including jewelry and GAZELLE for watches even when assuming that retail store services featuring goods including jewelry could be considered broadly stated to encompass watches.
These examples for the registration of AMAZON, TIGER, DANIEL K, and BIG BEAR, shows that the USPTO has taken a consistent position that consumers are not likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods and asks for a consistent application of said position in the instant case to pass applicant’s mark to publication.
For the above reasons, the applicant asserts that the subject mark is not likely to be confused with the registered mark and the pending mark cited by the Examiner and urges that the applicant’s mark be allowed and passed to publication.
Respectfully submitted,
Dated: May 11, 2006 By: /Jason Lie/
Jason Lie
Attorney for Applicant