PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 77238829 |
LAW OFFICE ASSIGNED | LAW OFFICE 113 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
1. OTHER PENDING APPLICATIONS The Examining Attorney indicated there may be a likelihood of confusion under Trademark Act Section 2(d) between Applicant’s mark and the marks of prior filed pending Application Serial No. 78039416. In response, Applicant respectfully submits there is no potential conflict between the present application and the referenced application. With respect to Application Serial No. 78039416, Applicant respectfully submits that there is no likelihood of confusion or potential therefor. As evidence of its position, Applicant submits herewith at EXHIBIT A a copy of a consent agreement between Applicant and the owner of Application Serial No. 78039416. See Paragraph B1 of the attached Agreement, which indicates the applicant of SN 78039416 specifically consents to Applicant’s use and registration of the mark and goods/services of the present application, as identified in Exhibit C thereto. Here, the self-interests of the Applicant and the 78039416 applicant have caused them to enter into a consent agreement, determining for themselves that confusion of their marks is unlikely. Paragraphs C1 of the Agreement states: In entering into this Agreement, each party has concluded that there is no likelihood of confusion between the parties’ current uses of their respective marks pursuant to this Agreement because the parties’ respective goods and the uses of such goods are sufficiently different and distinct to negate any likelihood of confusion between the parties’ respective marks, and because the parties’ respective goods will primarily travel in different channels of trade and are and will continue to be generally sold to different classes of purchasers, further negating any likelihood of confusion between the parties’ respective marks.
The parties’ determination was based upon a number of factors as enunciated in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), including differences in the goods, differences in the primary channels of trade for each company's respective goods, differences in the class of purchasers of the respective goods and other factors. The enclosed consent agreement constitutes more than a mere naked consent and, therefor, should play a "dominant role" in the likelihood of confusion analysis. Id. at 1362. See also In re Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071, 1072 (Fed. Cir. 1993). Accordingly, Applicant requests that Application Serial No. 78039416 be removed from consideration of the present application.
2. SPECIMENS OF USE The Trademark Attorney has indicated the specimen previously submitted for the goods is unacceptable because it fails to show use of the mark functioning as such on all of the applicant’s classes of goods, stating “the specimen shows use on only one (Class 25 Clothing?) class of goods.” The Trademark Attorney states the Applicant must submit a specimen showing the mark, as used in commerce, on the actual goods. In response, Applicant respectfully submits that the specimen previously submitted is sufficient for all the goods in the application. The present application is for multiple classes of goods and the same specimen was provided for all the goods. According to Section 904.01(b) of the TMEP, one specimen can be provided for multiple classes of goods, stating: A combined (or multiple-class) application is a request to register the same mark for goods and/or services in multiple classes in a single application. There must be one specimen of the mark for each class. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should make a note to the file indicating which classes the specimen supports. (Bold emphasis added). Thus, a single specimen that supports multiple classes is acceptable without showing its actual use on each class of goods. In the present application, the specimen supports all the classes of goods. The specimen is a label that is affixed by Applicant to packaging or containers for goods in each class of the application. Perhaps it was difficult for the Examining Attorney to see in the photo submitted that the specimen is a label because the label is white and it is attached to white tissue paper used to package the goods. Upon a close look at the submitted specimen, the edge of the square label can be seen. The same label is used for all the classes of goods. It just so happens the particular photo of the specimen submitted with the application shows two example uses of the specimen label affixed to packaging within which goods appearing to be clothing are wrapped. However, since the goods are wrapped in the packaging, it is unclear exactly what the goods are. If we submitted a separate photo of the label affixed to packaging wrapped around a sample from each class of goods, the goods would likely not be clearly discernable because they would be wrapped in tissue paper or other packaging. Thus, there is no need to send multiple specimens because they are all the same and the goods may not even be visible. Since the TMEP allows that multiple copies of the specimen are not required if the same specimen is used on multiple classes, Applicant respectfully requests the submits be accepted for all classes in this application.
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EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0002.JPG |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0003.JPG | |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0004.JPG | |
ORIGINAL PDF FILE | |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0005.JPG |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0006.JPG | |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0007.JPG | |
ORIGINAL PDF FILE | |
CONVERTED PDF FILE(S) (4 pages) |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0008.JPG |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0009.JPG | |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0010.JPG | |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0011.JPG | |
ORIGINAL PDF FILE | |
CONVERTED PDF FILE(S) (2 pages) |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0012.JPG |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0013.JPG | |
ORIGINAL PDF FILE | |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0014.JPG |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0015.JPG | |
\\TICRS2\EXPORT14\772\388\77238829\xml4\ROA0016.JPG | |
DESCRIPTION OF EVIDENCE FILE | A consent agreement with owner of application SN 78039416 |
ADDITIONAL STATEMENTS SECTION | |
PRIOR REGISTRATION(S) | "Applicant claims ownership of U.S. Registration Number(s) 2163631, 2883239, 3298110 and others." |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /ers/ |
SIGNATORY'S NAME | e randall smith |
SIGNATORY'S POSITION | attorney |
DATE SIGNED | 12/26/2007 |
RESPONSE SIGNATURE | /ers/ |
SIGNATORY'S NAME | e randall smith |
SIGNATORY'S POSITION | attorney |
DATE SIGNED | 12/26/2007 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Dec 26 14:17:23 EST 2007 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0071226141723021278-77238 829-410885498f6eff46ea6dc 8ae6c4d346dfe0-N/A-N/A-20 071226140948918126 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
1. OTHER PENDING APPLICATIONS
The Examining Attorney indicated there may be a likelihood of confusion under Trademark Act Section 2(d) between Applicant’s mark and the marks of prior filed pending Application Serial No. 78039416. In response, Applicant respectfully submits there is no potential conflict between the present application and the referenced application.
With respect to Application Serial No. 78039416, Applicant respectfully submits that there is no likelihood of confusion or potential therefor. As evidence of its position, Applicant submits herewith at EXHIBIT A a copy of a consent agreement between Applicant and the owner of Application Serial No. 78039416. See Paragraph B1 of the attached Agreement, which indicates the applicant of SN 78039416 specifically consents to Applicant’s use and registration of the mark and goods/services of the present application, as identified in Exhibit C thereto.
Here, the self-interests of the Applicant and the 78039416 applicant have caused them to enter into a consent agreement, determining for themselves that confusion of their marks is unlikely. Paragraphs C1 of the Agreement states:
In entering into this Agreement, each party has concluded that there is no likelihood of confusion between the parties’ current uses of their respective marks pursuant to this Agreement because the parties’ respective goods and the uses of such goods are sufficiently different and distinct to negate any likelihood of confusion between the parties’ respective marks, and because the parties’ respective goods will primarily travel in different channels of trade and are and will continue to be generally sold to different classes of purchasers, further negating any likelihood of confusion between the parties’ respective marks.
The parties’ determination was based upon a number of factors as enunciated in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), including differences in the goods, differences in the primary channels of trade for each company's respective goods, differences in the class of purchasers of the respective goods and other factors. The enclosed consent agreement constitutes more than a mere naked consent and, therefor, should play a "dominant role" in the likelihood of confusion analysis. Id. at 1362. See also In re Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071, 1072 (Fed. Cir. 1993). Accordingly, Applicant requests that Application Serial No. 78039416 be removed from consideration of the present application.
2. SPECIMENS OF USE
The Trademark Attorney has indicated the specimen previously submitted for the goods is unacceptable because it fails to show use of the mark functioning as such on all of the applicant’s classes of goods, stating “the specimen shows use on only one (Class 25 Clothing?) class of goods.” The Trademark Attorney states the Applicant must submit a specimen showing the mark, as used in commerce, on the actual goods. In response, Applicant respectfully submits that the specimen previously submitted is sufficient for all the goods in the application.
The present application is for multiple classes of goods and the same specimen was provided for all the goods. According to Section 904.01(b) of the TMEP, one specimen can be provided for multiple classes of goods, stating:
A combined (or multiple-class) application is a request to register the same mark for goods and/or services in multiple classes in a single application. There must be one specimen of the mark for each class. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should make a note to the file indicating which classes the specimen supports. (Bold emphasis added).
Thus, a single specimen that supports multiple classes is acceptable without showing its actual use on each class of goods. In the present application, the specimen supports all the classes of goods. The specimen is a label that is affixed by Applicant to packaging or containers for goods in each class of the application. Perhaps it was difficult for the Examining Attorney to see in the photo submitted that the specimen is a label because the label is white and it is attached to white tissue paper used to package the goods. Upon a close look at the submitted specimen, the edge of the square label can be seen.
The same label is used for all the classes of goods. It just so happens the particular photo of the specimen submitted with the application shows two example uses of the specimen label affixed to packaging within which goods appearing to be clothing are wrapped. However, since the goods are wrapped in the packaging, it is unclear exactly what the goods are. If we submitted a separate photo of the label affixed to packaging wrapped around a sample from each class of goods, the goods would likely not be clearly discernable because they would be wrapped in tissue paper or other packaging. Thus, there is no need to send multiple specimens because they are all the same and the goods may not even be visible. Since the TMEP allows that multiple copies of the specimen are not required if the same specimen is used on multiple classes, Applicant respectfully requests the submits be accepted for all classes in this application.