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. 77328312 has been amended as follows:

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

The Examining Attorney has initially refused registration, citing likely confusion with the mark(s) subject to U.S. Registration Nos. 3217996 and 2264110. 

 

I.                   Response To Section 2(d) Refusal

The Examining Attorney has alleged that Applicant's mark may cause confusion with the registered mark CREST (Reg. No. 3217996) and CREST (Reg. No. 2264110 ("Cited Registrations").  Applicant respectfully submits that there is no likelihood of confusion in either case, and requests that the refusal be withdrawn.

Determining whether a likelihood of confusion will arise between two trademarks requires analyzing the factors set forth in In Re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  In assessing likelihood of confusion, courts look to the "nature of the products themselves and the structure of the relevant market."  Cadbury Beverages v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996); Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981).  Among the factors courts consider are "the manner in which the services are displayed and advertised, the channels of trade through which they are promoted, and the class of customers for whom they are designed and to whom they are sold."  Windsor, Inc. v. Intravco Travel Centers, Inc., 799 F. Supp. 1513, 1523 (S.D.N.Y. 1992).

 

Confusion is unlikely in view of differences in the goods, their normal purchasers, and the channels of trade.

As amended, the present application seeks registration of CREST for a variety of men's and women's sportswear, tailored clothing and children's clothing.  Because these products are clothing items, the Examining Attorney has taken the position that confusion is likely to arise between the mark in the Cited Registrations, both of which cover uniforms and similar articles of clothing for the hospitality, restaurant, and health care industries.  The Cited Registrations, both in the name of Aramark Uniform & Career Apparel Group, Inc. or its successor, cover, respectively:  "Uniforms, clothing and apparel for use by hospitality and restaurant staff, namely, coats, pants, shirts, aprons, smocks and hats," and "articles of clothing for the health care industry, namely, pants, pantsuits, jumpsuits, skirt, blouses, dresses and culottes."  Hospitality and restaurant staff uniforms, sold to health care institutions, universities and school districts, stadiums and arenas, are specialty products sold in narrow channels of trade.  The products themselves, the channels of trade and the customer groups differ greatly from the applicant's clothing sold at retail to the general public.  As a result of these many significant differences, confusion with the mark in the Cited Registrations is highly unlikely.

Accordingly, applicant respectfully requests that the Examining Attorney withdraw the refusal to register this mark and approve the application for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Men's sportswear, women's sportswear, tailored clothing, neckwear, namely, ties and scarves, dress shirts, underwear, children's clothing and shoes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Proposed: Class 025 for Men's sportswear, women's sportswear, namely, sport jackets, sport shirts, sport pants, sport shorts, sports jerseys, polo shirts, swimwear, athletic footwear, socks, sport bras, tailored clothing, namely, coats, raincoats, jackets, blouses, shirts, dresses, shorts, trousers, suits, skirts, stockings, socks, belts, shawls, gloves, neckwear, namely, ties and scarves, underwear, children's clothing, namely, jackets, pants, shirts, shorts, pajamas, shoes
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)
Response Signature
Signature: /Robert W. Sacoff/     Date: 08/11/2008
Signatory's Name: Robert W. Sacoff
Signatory's Position: Attorney of Record

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: 77328312
Internet Transmission Date: Mon Aug 11 17:08:38 EDT 2008
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-200808111708387032
13-77328312-430dbddb2c1ab6dafeb995c4be8c
4ad29d-N/A-N/A-20080811164630870533