Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77111371 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

SECTION 2(D) – LIKELIHOOD OF CONFUSION

The Examining Attorney has suspended Applicant’s application for SWEET MARIE under Section 2(d), citing an existing application for SWEET-MARIA’S & Design, Serial No. 78/505008 owned by Sweet-Maria’s Inc.

Applicant respectfully disagrees with the Examining Attorney and believes that the differences between the two marks, as well as the differences in the goods covered by the cited application and Applicant’s application, obviate any likelihood of confusion.  Further, Applicant owns Registration No. 225,640 for SWEET MARIE covering “confectionery, particularly chocolates.”  Finally, Applicant’s review of the United States Trademark records determined that similar third party marks covering related goods can coexist without consumer confusion.  All of these factors strongly support a reconsideration of the Applicant’s application. 

First, Applicant’s mark is SWEET MARIE.  The cited application is for the mark SWEET-MARIA’S in a stylized font with a design element.  The cited application’s inclusion of  stylized lettering along with a design element materially distinguishes the marks and creates a clearly distinct commercial impression.  This is particularly true since the cited application for SWEET-MARIA’S & Design covers “cakes and cookies” and Applicant’s application for SWEET MARIE covers “confectionery, namely candy and chocolate.”  While the goods are both in International Class 30, they are recognizably of a different nature and would not be sold side-by-side.  A consumer is not likely to be confused that the cakes and cookies bearing the stylized SWEET-MARIA’S design mark and the candy and chocolate bearing the SWEET MARIE trademark are from the same source.

Although Applicant’s mark and the cited registration share some common elements, it is well established that the most important consideration is the impression a mark as a whole, and not the parts thereof, creates for the average, reasonably prudent consumer.  The fact that a common element is present in two different marks may initiate an inquiry into likelihood of confusion, but that fact alone does not justify a finding of likelihood of confusion.  See Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970).

Second, as noted, the cited application has been allowed by the United States Patent and Trademark Office and coexists with Applicant’s earlier Registration No. 225,640 for SWEET MARIE.  Therefore, the United States Patent and Trademark Office has already deemed that SWEET MARIE and SWEET-MARIA’S & Design may coexist.

Although prior decisions of the Trademark Office are not binding precedent, it cannot be ignored that in addition to the coexistence of Registration No. 225,640 for SWEET MARIE and the cited application for SWEET-MARIA’S & Design, the existence of third party marks encompassing similar terms covering similar goods is further proof that Applicant’s mark can co-exist with the cited mark.  Applicant also notes that SWEET MARCELLINE’S (Reg. No. 3,071,115) owned by Sweet Marceline’s, Inc. covering “confectionery, namely candy” coexists with the cited application for SWEET-MARIA’S & Design, as well as Applicant’s Registration No. 225,640 for SWEET MARIE. 

If the registrations and application discussed above can peacefully co-exist without confusion among the consuming public, there is no evidence or other reason to deny registration of Applicant’s SWEET MARIE mark.

For all of these reasons, Applicant submits that with this filing its application is in form appropriate for publication, and thus respectfully requests favorable reconsideration of its application and that same be removed from suspension.

Evidence
Evidence in the nature of TEAS printouts of referenced marks. has been attached.
Original PDF file:
evi_65160155100-161859787_._teas_SWEET_MARIE.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65160155100-161859787_._teas_SWEET_MARCELLINE_S.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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: /Daniel Chung, Esq./      Date: 05/23/2007
Signatory's Name: Daniel Chung, Esq.
Signatory's Position: Assistant Secretary

Response Signature
Signature: /Daniel Chung, Esq./     Date: 05/23/2007
Signatory's Name: Daniel Chung, Esq.
Signatory's Position: Assistant Secretary

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
Serial Number: 77111371
Internet Transmission Date: Wed May 23 16:25:35 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200705231625359
33123-77111371-37010c7eddb8763382974337f
ea6976f-N/A-N/A-20070523161859787706