| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 77010234 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
ARGUMENT
The Examining Attorney has preliminarily refused registration of Applicant’s mark on the grounds that the mark is confusingly similar to the mark ZILCH shown in Reg. No. 3137929 for “non-alcoholic drink mixes used in making alcoholic and non-alcoholic drinks.” Applicant respectfully disagrees with the Examining Attorney and submits that its mark is not confusingly similar to the cited mark, because the respective goods and uses for the goods are quite different. As amended herein, Applicant deleted “juices” in Class 32. The Examining Attorney predominantly rejected Applicant’s mark on the basis that it covered “juices” and that “drink mixes” could be combined with “juices.” Since Applicant’s application no longer covers “juices,” Applicant believes that the citation is moot on that basis alone. Moreover, the respective goods and uses for the goods are very different. Applicant’s goods are intended to be used in conjunction with or as products associated with medically-supervised weight loss programs. Applicant manufactures products for distribution by and through Smart for Life Weight Management Centers (www.cookiediet.com; www.togetthin.com). The cited mark specifies that it covers “drink mixes.” The mark does not cover any other goods. Attached is a copy of the specimen submitted with the Amendment to Allege Use for the cited mark, which was obtained from the Trademark Office website. The specimen clearly describes that the “drink mix” is for a “margarita mixer.” The mix shown on the specimen is a “non-alcoholic” drink mix, but it requires to be mixed with “tequila.” Clearly, the drink mixes contemplated by the cited mark are quite different and distinguishable from Applicant’s goods. Further, Applicant’s goods cannot be deemed “complementary” to the goods in the cited mark. It is highly unlikely, for example, that a consumer would eat a “protein based nutrient dense snack bar” in combination with registrant’s drink mixes. Likewise, the various types of “syrups” in Applicant’s application, as amended, are not related to registrant’s goods and would not be consumed at or near the same time as registrant’s “drink mixes.” Even virtually identical marks may coexist on the Principal Register, provided that the goods or services associated with the marks are sufficiently different. See, e.g., Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between E.D.S. for battery chargers and power supplies and EDS for computer services); Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992) (confusion not likely between EDSA for computer programs for electrical distribution system analysis and design and EDS for computer data processing programming services; parties' products are not related merely because each party provides software programs which process data, given "ubiquitous use" of computers in all aspects of business; just because both parties provide computer programs does not establish a relationship between the goods or services such that consumers would believe that all computer software programs emanate from same source simply because of the similar letters used in the marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for products such as lamps and tubes related to the photocopying field); NEC Electronics, Inc. v. New England Circuit Sales, Inc., 13 USPQ2d 1058 (D. Mass. 1989) (no likelihood of confusion between NEC for electronic components and use of NECS in conjunction with name "New England Circuit Sales" for sale of computer chips); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services); Triumph Machinery Company v. Kentmaster Manufacturing Company, Inc., 1 USPQ2d 1826 (TTAB 1987) (no likelihood of confusion between HYDRO-CLIPPER for power operated cattle de-horning shears and HYDRO-CLIPPER and Design for power mower attachments); TMEP 1207.01(a)(i). Moreover, even if there were some arguable overlap in the respective goods (which Applicant contends there is not), there is no per se rule that confusion is likely whenever products in the same general category are sold or offered under similar marks. Thus, just because Applicant’s mark covers “some types” of food products does not mean that all types of “food products” are related or complementary to each other. See, e.g., Interstate Burns Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 153 (CCPA 1978) ("a per se rule based on a single fact would be improper and inconsistent with §2(d) of the Lanham Act") (no likelihood of confusion between ZINGERS for cakes and RED ZINGER for herb tea); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:48 (4th ed. 2007), citing inter alia, Best Flavors, Inc. v. Mystic River Brewing Co., 36 USPQ2d 1247 (D. Me. 1995) (MYSTIC SEAPORT for soft drinks infringes MISTIC for spring water and fruit drinks, MYSTIC SEAPORT for alcoholic beverages such as beer does not infringe: “[A]lcoholic beverages sales are not within the natural outgrowth of the MISTIC trademarked products”); see also, Electronic Design & Sales, supra, 21 USPQ2d at 1391 ("although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers"); Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988) (no per se rule requires finding of likelihood of confusion in all cases in which goods or services in question involve computer software or hardware); Electronic Design & Sales, supra, 21 USPQ2d at 1391 ("although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers"). Because the goods under the respective marks are distinguishable, in that they serve different purposes and are likely directed to different markets or consumers, Applicant submits that the marks are not likely to be confused. See also, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:51 (4th ed. 2007), citing inter alia, Trade Publications, Inc. v. Big Bear of North Carolina, Inc., 191 USPQ 477 (M.D.N.C. 1976) (FOOD WORLD trade journal “would be almost totally unknown” to people who shop at defendant’s FOOD WORLD grocery store); McCarthy, §24:62, citing inter alia, Federated Dept Stores, Inc. v. Gold Circle Ins. Co., 226 USPQ 262 (TTAB 1985) (GOLD CIRCLE for department stores not similar to GOLD CIRCLE for insurance). Applicant therefore requests that the citation be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20618114134-110229486_._zilch-mix.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT13\770\102 \77010234\xml1\ROA0002.JP G |
| DESCRIPTION OF EVIDENCE FILE | copy of specimen submitted to the Trademark Office for the cited mark |
| GOODS AND/OR SERVICES SECTION (005)(current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | dietetic snack foods |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (005)(proposed) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | dietetic snack foods for medical use |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (029)(current) | |
| INTERNATIONAL CLASS | 029 |
| DESCRIPTION | |
| snack foods made of protein and other ingredients; protein bars; dips (excluding salsa); non-dairy creamers | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (029)(proposed) | |
| INTERNATIONAL CLASS | 029 |
| DESCRIPTION | |
| protein based snack foods; protein based, nutrient dense snack bars; dips, not including salsa and other sauces; non-dairy creamers | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (030)(current) | |
| INTERNATIONAL CLASS | 030 |
| DESCRIPTION | |
| snack foods made of wheat flour, oat bran and other ingredients; sugar substitutes; syrups (for food); marinades; salad dressing; salsa; seasonings; candy; chewing gum | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (030)(proposed) | |
| INTERNATIONAL CLASS | 030 |
| DESCRIPTION | |
| wheat based snack foods made from wheat flour and oat bran; sugar substitutes; syrups, namely, maple syrup, pancake syrup, table syrup, chocolate syrup; marinades; salad dressing; salsa; seasonings; candy; chewing gum | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (032)(current) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | juices |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (032)(proposed) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | syrups for making meal replacement shakes and puddings |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Linda Urbanik Johnson/ |
| SIGNATORY'S NAME | Linda Urbanik Johnson |
| SIGNATORY'S POSITION | attorney of record |
| DATE SIGNED | 07/02/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 02 11:11:29 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20070702111129901599-7701 0234-3708f328b86f19661932 11c8cec74c9da46-N/A-N/A-2 0070702110229486135 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
ARGUMENT
The Examining Attorney has preliminarily refused registration of Applicant’s mark on the grounds that the mark is confusingly similar to the mark ZILCH shown in Reg. No. 3137929 for “non-alcoholic drink mixes used in making alcoholic and non-alcoholic drinks.” Applicant respectfully disagrees with the Examining Attorney and submits that its mark is not confusingly similar to the cited mark, because the respective goods and uses for the goods are quite different.
As amended herein, Applicant deleted “juices” in Class 32. The Examining Attorney predominantly rejected Applicant’s mark on the basis that it covered “juices” and that “drink mixes” could be combined with “juices.” Since Applicant’s application no longer covers “juices,” Applicant believes that the citation is moot on that basis alone. Moreover, the respective goods and uses for the goods are very different.
Applicant’s goods are intended to be used in conjunction with or as products associated with medically-supervised weight loss programs. Applicant manufactures products for distribution by and through Smart for Life Weight Management Centers (www.cookiediet.com; www.togetthin.com).
The cited mark specifies that it covers “drink mixes.” The mark does not cover any other goods. Attached is a copy of the specimen submitted with the Amendment to Allege Use for the cited mark, which was obtained from the Trademark Office website. The specimen clearly describes that the “drink mix” is for a “margarita mixer.” The mix shown on the specimen is a “non-alcoholic” drink mix, but it requires to be mixed with “tequila.” Clearly, the drink mixes contemplated by the cited mark are quite different and distinguishable from Applicant’s goods. Further, Applicant’s goods cannot be deemed “complementary” to the goods in the cited mark. It is highly unlikely, for example, that a consumer would eat a “protein based nutrient dense snack bar” in combination with registrant’s drink mixes. Likewise, the various types of “syrups” in Applicant’s application, as amended, are not related to registrant’s goods and would not be consumed at or near the same time as registrant’s “drink mixes.”
Even virtually identical marks may coexist on the Principal Register, provided that the goods or services associated with the marks are sufficiently different. See, e.g., Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between E.D.S. for battery chargers and power supplies and EDS for computer services); Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992) (confusion not likely between EDSA for computer programs for electrical distribution system analysis and design and EDS for computer data processing programming services; parties' products are not related merely because each party provides software programs which process data, given "ubiquitous use" of computers in all aspects of business; just because both parties provide computer programs does not establish a relationship between the goods or services such that consumers would believe that all computer software programs emanate from same source simply because of the similar letters used in the marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for products such as lamps and tubes related to the photocopying field); NEC Electronics, Inc. v. New England Circuit Sales, Inc., 13 USPQ2d 1058 (D. Mass. 1989) (no likelihood of confusion between NEC for electronic components and use of NECS in conjunction with name "New England Circuit Sales" for sale of computer chips); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services); Triumph Machinery Company v. Kentmaster Manufacturing Company, Inc., 1 USPQ2d 1826 (TTAB 1987) (no likelihood of confusion between HYDRO-CLIPPER for power operated cattle de-horning shears and HYDRO-CLIPPER and Design for power mower attachments); TMEP 1207.01(a)(i).
Moreover, even if there were some arguable overlap in the respective goods (which Applicant contends there is not), there is no per se rule that confusion is likely whenever products in the same general category are sold or offered under similar marks. Thus, just because Applicant’s mark covers “some types” of food products does not mean that all types of “food products” are related or complementary to each other. See, e.g., Interstate Burns Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 153 (CCPA 1978) ("a per se rule based on a single fact would be improper and inconsistent with §2(d) of the Lanham Act") (no likelihood of confusion between ZINGERS for cakes and RED ZINGER for herb tea); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:48 (4th ed. 2007), citing inter alia, Best Flavors, Inc. v. Mystic River Brewing Co., 36 USPQ2d 1247 (D. Me. 1995) (MYSTIC SEAPORT for soft drinks infringes MISTIC for spring water and fruit drinks, MYSTIC SEAPORT for alcoholic beverages such as beer does not infringe: “[A]lcoholic beverages sales are not within the natural outgrowth of the MISTIC trademarked products”); see also, Electronic Design & Sales, supra, 21 USPQ2d at 1391 ("although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers"); Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988) (no per se rule requires finding of likelihood of confusion in all cases in which goods or services in question involve computer software or hardware); Electronic Design & Sales, supra, 21 USPQ2d at 1391 ("although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers").
Because the goods under the respective marks are distinguishable, in that they serve different purposes and are likely directed to different markets or consumers, Applicant submits that the marks are not likely to be confused. See also, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:51 (4th ed. 2007), citing inter alia, Trade Publications, Inc. v. Big Bear of North Carolina, Inc., 191 USPQ 477 (M.D.N.C. 1976) (FOOD WORLD trade journal “would be almost totally unknown” to people who shop at defendant’s FOOD WORLD grocery store); McCarthy, §24:62, citing inter alia, Federated Dept Stores, Inc. v. Gold Circle Ins. Co., 226 USPQ 262 (TTAB 1985) (GOLD CIRCLE for department stores not similar to GOLD CIRCLE for insurance). Applicant therefore requests that the citation be withdrawn.