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. 77116690 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant        :           Board of Regents of the University System of Georgia

Serial No.        :           77/116,690

Filed                :           February 26, 2007

Mark                :           V STATE & Design

Examining

Attorney          :           Hannah Fisher, Esq.

Law Office     :           111

AMENDMENT AND RESPONSE TO OFFICE ACTION

Commissioner for Trademarks

P.O. Box 1451

Alexandria, Virginia, 22313-1451

In response to the Office Action dated May 18, 2007, Applicant requests reconsideration of the above-described application in view of the following amendments and remarks.

I.                   INFORMALITIES

A.                Amendment

Please amend the application and add the following disclaimer: 

-- No claim is made to the exclusive right to use “state” apart from the mark as shown. --

B.                 Specimen

In accordance with TMEP § 904.02, Applicant’s attorneys resubmit herewith a true and correct copy of the specimen that was submitted for Class 14 with the application.  Applicant therefore believes that this requirement has been fulfilled.   Should any of the examples of use be unacceptable, Applicant stands ready to submit substitute specimens verified in accordance with 37 C.F.R. § 2.20. 

II.                REMARKS

Applicant respectfully traverses the rejection under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052 (d), and provides the following in response thereto. 

A.                There Is No Likelihood of Confusion
Between the Cited Marks and Applicant’s Mark

1.                  Introduction

            The Examining Attorney has refused registration of the instant mark, V State and Design, for various goods in International Classes 6, 14, 18, 21, 24, 25, 27 and 28, as well as educational and entertainment (athletic competition) services in International Class 41 (“Applicant’s Mark”) on the grounds that it is likely to be confused with the mark “V and Design” as shown in U.S. Reg. No. 1,690,568 owned by the Rector and Visitors of the University of Virginia and the mark “V and Design” shown in U.S. Reg. No. 2,905,700 owned by Vanderbilt University (collectively, the “Cited Marks”).

            Applicant respectfully submits that there is no likelihood of confusion between Applicant’s Mark and the Cited Marks.  First, Applicant’s Mark is visually and phonetically distinct, and creates an entirely different commercial impression.  Second, the Marks are applied respectively to disparate goods and services.  Third, the relevant channels of trade are sufficiently dissimilar and customers exercise sufficient care as to educational institutions and their related goods and services to prevent likelihood of confusion.

2.                  Basic Principles

            The likelihood of confusion analysis includes at least two primary steps.  First, one considers the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (formulating a non-exhaustive list of thirteen factors to analyze when assessing likelihood of confusion).  Second, one considers the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  Id.

            “The basic principle in determining confusion between marks is that marks must be compared in their entireties . . . and cannot be predicated on dissection of a mark.”  In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749 (Fed. Cir. 1985).  The rationale for this rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts.  Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545-46, 40 S. Ct. 414, 417 (1920).  Applicant’s Mark and the Cited Marks, when taken in their entireties, are different in appearance and meaning.  Further, the connotation and commercial impression conveyed by the marks are distinct.

            It is the overall impression created by the mark that will or will not lead to likelihood of confusion.  Here, the Examining Attorney asserts that there is a likelihood of confusion presumably because Applicant’s Mark and the Cited Marks share a term in common; specifically, the letter “V.”  It should be noted, however, that under the overall impression analysis, there is no rule that confusion is automatic, merely because applicant has a mark that contains in part or in whole another’s mark.  J.T. McCarthy, 3 McCarthy on Trademarks and Unfair Competition, §23:41 (4^th ed. 2006).  See, e.g., Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46-47, 55 U.S.P.Q. 1051 (2d Cir. 2000) (holding that DENTYNE ICE is not confusingly similar to ICE BREAKERS); Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1407, 184 U.S.P.Q. 422 (C.C.P.A. 1975) (holding that COUNTRY VOGUES is not confusingly similar to VOGUE); In re Ferrero, 479 F.2d 1395, 1397, 178 U.S.P.Q. 167 (C.C.P.A. 1973) (holding that TIC TAC is not confusingly similar to TIC TAC TOE); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109, 174 U.S.P.Q. 392 (C.C.P.A. 1972) (holding that ALL CLEAR! is not confusingly similar to ALL); Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 1402, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (holding that PEAK PERIOD is not confusingly similar to PEAK); In re Merch. Motivation, Inc., 184 U.S.P.Q. 364, 364 (T.T.A.B. 1974) (finding no absolute rule regarding inclusion of another’s mark as part of one’s own mark; held that MMI MENSWEAR is not confusingly similar to MEN’S WEAR). 

3.                  Applicant’s Mark is Different in Sight, Sound and Meaning

            In accordance with the foregoing principles, Applicant’s Mark, V State and Design, must be viewed in its entirety.  In other words, the word “STATE” and the design elements cannot be ignored.  The educational institution that uses this mark is Valdosta State.  The mark “V State” is viewed and read to include “V State.”  This impression is reinforced visually by the prominent, front-and-center presentation of the word STATE across the letter “V” on a flowing banner.  This banner design feature highlights the word STATE and differentiates the mark V State and Design from the Cited Marks.  In fact, the word STATE alone creates a distinct impression that distinguishes Applicant’s Mark from the Cited Marks.   The instant mark will be and is viewed and spoken by the relevant public as “V State,” not merely “V.” 

            Of course, the marks must also be considered in context.  The Cited Marks are the Vanderbilt “V” and the Virginia “V.”  These well known institutions cannot be divorced from the analysis.  In fact, if such a dissection were proper, registration of one mark over the other would perhaps be improper.  However, because these marks must be viewed in context, the Virginia “V” and the Vanderbilt “V” are not likely to be confused.  In context, the Cited Marks create different commercial impressions one from the other.  In a similar analysis, the V State and Design Mark creates an even more distinct impression.  Not only does the mark include the word STATE and the banner design element, the applicable context here is Valdosta State, a four-year college in Valdosta, Georgia.  When viewed in the context of the institution with which the instant mark is associated, it confirms that there is no likelihood of confusion. 

            Consumers will see and hear the term STATE as a part of V State and Design, and rely thereon to differentiate the three Marks.  Moreover, even if one is not familiar with the respective institutions, consumers are familiar with the term STATE as a point of differentiation.  For example, the relevant public understands that GEORGIA (e.g., the University of Georgia) and GEORGIA STATE (e.g., Georgia State University) are different institutions.  (Other examples include: MICHIGAN/MICHIGAN STATE; ILLINOIS/ILLINOIS STATE; OREGON/OREGON STATE; OKLAHOMA/OKLAHOMA STATE; NEW MEXICO/NEW MEXICO STATE, etc.)  In like fashion, the presence of the word STATE in the mark V State and Design, coupled with its unique banner-like presentation, creates a separate impression that is not likely to be confused with either the Vanderbilt “V” or the Virginia “V.”  People simply would not attach the word “STATE” to either of those Institutions or their respective trademarks. 

4.                  The Respective Marks Are Applied to Disparate Goods and Services

            The Examining Attorney contends that the parties’ respective goods and services are related.  Of course, there is no hard and fast “per se” rule in such issues.  The Trademark Trial and Appeal Board has held that “there can be no rule that certain goods and services are per se related.”  See, e.g., In re Quadram Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985).  Each case must instead be decided on its own merits.  See  In re Ampco Foods, Inc., 227 U.S.P.Q. 331 (T.T.A.B. 1985).  In Quadram Corp., the Board found that the two marks MICRIOFAZER and FASER were not confusingly similar.  The Board stated that:

[w]e think that a per se rule relating to source confusion vis-à-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace. We note that, in the past, tendencies toward applying "per se" rules relating to likelihood of confusion in other fields have been struck down as being too inflexible and contrary to trademark law where each case must be decided based on its own facts and circumstances.  In re Quadram Corp., 228 U.S.P.Q. at 865 (emphasis added).

Moreover, the fact that two entities exist within the same general field or industry, does not necessarily support the conclusion that they share the same trade channels.  See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 717 (Fed Cir. 1992) (“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 [entity] does not, by itself, establish similarity of trade channels or overlap of customers”).  Nor does the fact that two entities are in the same broad field implicate an overlap of prospective customers or the use of similar trade channels.  See Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (“The most favorable inference that may be drawn . . . regarding the similarity of goods is that both parties’ products are used in the [same] field. However, such a broad inference is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion . . .”).

Applicant Valdosta State University, the University of Virginia and Vanderbilt University are all admittedly established, well-respected institutions of higher learning that offer undergraduate programs, graduate programs, and comprehensive athletics programs.  That is not to say, however, that they share similar trade channels, or that there is an overlap of prospective customers.  For example, because of the distinctive offerings of each school and the nature of the market place for college goods and services, people are not likely to be confused.  While these schools each offer various sporting events, the “V State” football team is not confused with the University of Virginia or Vanderbilt University football teams.  Similarly, while each school offers calculus, the “V State” class offerings are unique in that the professors, testing criteria, syllabus, students, etc. differ from those at Vanderbilt or Virginia.  Likewise, the football program at Valdosta State University consists of different coaches, players, uniforms, plays, etc. than that at either Virginia or Vanderbilt.  Not only is Applicant’s V State and Design Mark visually and phonetically different from either of the Cited Marks, but the goods and services offered under Applicant’s Mark are unique to Valdosta State University.

5.                  The Customers Are Sufficiently Dissimilar and They
Exercise Such Care To Prevent a Likelihood of Confusion

            The V State and Design university courses and athletic competitions, as well as clothing featuring V State and Design, are unique to Valdosta State University.  The consumer attending a class or athletic event at Valdosta State, or buying a sweatshirt featuring the V State and Design Mark, is interested in and/or wants to be associated with Valdosta State University.  It is well recognized that selecting a college is a difficult decision made with extreme care and deliberation.  A prospective student’s  parents, teachers, guidance counselors, coaches, friends and others may be consulted.  The prospective student will most likely visit the campus.  A college education is very expensive, and the person considering “V State” (or Virginia or Vanderbilt) will exercise great care.  With reference to goods such as clothing and novelty items, the relevant public will still exercise sufficient care to insure that they obtain a “V State” product so as to obtain and enjoy the desired association with Valdosta State University.  Consumers of V State and Design products are often students who have applied, enrolled and registered for educational services (or parents, etc.) for the purpose of attaining a degree from Valdosta State University.  Consumers of “V State” products are often students and alumni of Valdosta State University, or have other ties to Valdosta State University.  As a result of such associations (or desired associations), consumers will exercise sufficient care in purchasing goods and services offered under the V State and Design Mark to readily distinguish them from  goods and services offered under either of the Cited Marks.

            Thus, any likelihood of confusion between Applicant’s Mark and the Cited Marks is obviated by the degree of care that will be and is exercised by consumers in the collegiate market place.

B.                 Conclusion

Applicant respectfully submits that it’s V State and Design Mark is not confusingly similar to the Cited Marks.  Applicant’s Mark differs in appearance and meaning from both of the Cited Marks.  In context, Applicant’s Mark is distinctively different from the Virginia “V” and the Vanderbilt “V”.  The relevant consumers will exercise more than sufficient care such that no likelihood of confusion exists. 

Having responded to all outstanding issues raised by the Examining Attorney, it is respectfully requested that the mark be passed on to publication.

Respectfully submitted,

KING & SPALDING LLP

Attorneys for Applicant

Dated: November 19, 2007                                        By: /Stephen M. Schaetzel/_____      

Atlanta, Georgia                                                               STEPHEN M. SCHAETZEL

                                                                                    1180 Peachtree Street

                                                                                    Atlanta, Georgia 30309-3521

                                                                                    (404) 572-2534

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Jewelry; Jewelry watches; Lapel pins; Rings being jewelry
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/27/2004 and first used in commerce at least as early as 10/27/2004, and is now in use in such commerce.

Proposed: Class 014 for Jewelry; Jewelry watches; Lapel pins; Rings being jewelry
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/27/2004 and first used in commerce at least as early as 10/27/2004, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 014. The specimen(s) submitted consists of photo of a watch with the V STATE Logo.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1

ADDITIONAL STATEMENTS
Disclaimer
"No claim is made to the exclusive right to use STATE apart from the mark as shown."

SIGNATURE(S)
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: /Ronald M. Zaccari/      Date: 11/19/2007
Signatory's Name: Ronald M. Zaccari
Signatory's Position: President, Valdosta State University

Response Signature
Signature: /Stephen M. Schaetzel/     Date: 11/19/2007
Signatory's Name: Stephen M. Schaetzel
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. He/she further confirms that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) he/she is the applicant's attorney or an associate of that attorney.

        
Serial Number: 77116690
Internet Transmission Date: Mon Nov 19 16:40:33 EST 2007
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2007111916403375056
9-77116690-410ef4cf333d3fce2f3ebcddf1d13
7ed7-N/A-N/A-20071119143955597868