Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77494877 has been amended as follows:

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

Dear Examining Attorney:

      This is Applicant's response to the non-final Office Action dated September 4, 2008.  In the Office Action, the Examining Attorney has refused registration under Section 2(d) of the Trademark Act based on likelihood of confusion with U.S. Registration No. 2,844,539 ("the '539 Registration") for the trademark "MRS. GREEN".  Applicant traverses the rejections and objections based on argument and amendment and respectfully requests the Examining Attorney withdraw all rejections and objections to Applicant's mark's registration.

IDENTIFICATION OF GOODS

Please amend the identification and description of goods to read as follows:

International Class 16: desktop business card holders having solar-powered moving parts

 

International Class 28: solar-powered bobble headed dolls

 

LIKELIHOOD OF CONFUSION

With respect to the '539 Registration, namely "MRS. GREEN" for toys, namely puppets, dolls, toy figurines, stuffed toys, and plush toys", Applicant respectfully submits that due to the differences between the marks, the differences between the goods identified in the '539 Registration and Applicant's goods, the channels of trade for Applicant's goods, the target customer demographics, and the level of sophistication of the purchasers of such goods, there is no likelihood of confusion between the parties' respective trademarks. 

The mark shown in the '539 Registration is "MRS. GREEN" while the Applicant's mark is "MR. GREEN".  As illustrated by the specimen of use in commerce filed during the prosecution of the '539 Registration,  Registrant's "MRS. GREEN" mark is a reference to a character in a popular series of children's books; whereby, Registrant's goods comprise toy memorabilia related to the book series.  Conversely, Applicant's identifications of goods, as currently amended, encompass solar-powered oscillating desktop business card holders and solar-powered bobble head toys; whereby, Applicant's intended use of the "MR. GREEN" mark is suggestive of eco-friendly "green" technology or solar power in this instance.  Thus, Applicant's intended use of the "MR. GREEN" mark and Registrant's use of the "MRS. GREEN" mark are intended to create entirely dissimilar commercial impressions in  consumers' minds; namely, the marks use in conjunction with the goods of Applicant and Registrant suggest an eco-friendly "green" product and characters in a popular children's book series, respectively.  Hence, Registrant and Applicant's respective goods would not be purchased by the same consumers.  Registrant's goods are toys inspired by and related to the Mrs. Green book series that are designed to be purchased for child readers of the popular series.  Conversely, Applicant's goods are solar-powered desktop novelty accessories and toys that are designed to be purchased by eco-conscience office professionals. 

With respect to the channels of trade for the parties' identified goods, Registrant's toys related to the popular book series would be sold in bookstores, toy stores, and other venues directed toward children's products and to consumers familiar with the popular book series and purchasing for children.  Conversely, Applicant's goods are eco-friendly desk accessories for use in home and office that are sold by Applicant through retail channels that are owned and operated by Applicant and its affiliates; namely, Applicant's catalogs, retail Internet site, and retail stores and outlets.  In addition, purchasers Registrant's goods would be highly sophisticated consumers who are seeking a specific product related to and associated with the Mrs. Green books.

Assuming arguendo that '539 Registrant's and Applicant's goods are related, Vitarroz Corp. v. Borden, Inc. demonstrates a finding of no likelihood of confusion between identical marks and goods similar to each other.  209 U.S.P.Q. 969 (2^nd Cir. 1981); wherein, the Second Circuit held that identical marks BRAVOS for crackers and BRAVOS for tortilla chips were not confusingly similar.  This decision emphasizes that a finding of confusing similarity requires much more than mere similarity or even identity of marks.  The Court held that it was not significant that the same retail stores would sell both products.  Instead, the Court held that the determining factor was that the respective goods were directed to different customers, thus, customer confusion was unlikely.  In the instant case, Applicant's goods are directed to consumers who are eco-conscious and interested in solar-powered "green" products as opposed to Registrant's goods being directed to consumers shopping for children who are interested in the Mrs. Green book series.  Furthermore, the Court concluded that a "per se rule based on similarity of marks and the competition between products could be justified only if we could say with reasonable certainty that the injury to the plaintiff is inevitable." Id. at 975.  In the instant case, there is no more basis for a belief that confusion or detriment would be "inevitable" than there was in Vitarroz.  Therefore, consumers are not likely to believe that the respective goods originate from the same source.  Such is the case wherein the parties' respective goods are directed to different customers, as previously discussed with respect to the different purposes of the respective goods, the different channels of trade, and the sophistication of the purchasers.

 

CONCLUSION

Applicant respectfully avers that this application, as currently amended, is in condition for allowance and respectfully requests the refusal to register be withdrawn.   Accordingly, the objections raised and the requirements made by the Examining Attorney now having been met, Applicant respectfully requests the above-identified Application be accepted for publication.  If the Examining Attorney believes that a telephone conference will expedite the processing and examination of this application, Applicant courteously invites the Examining Attorney to contact Applicant's undersigned designee.

                                                                                    Respectfully submitted,

                                                                                    Brookstone Purchasing, Inc.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Desktop business card holders
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:
Tracked Text Description: [Desktop business card holders], Desktop business card holders having solar-powered moving partsClass 016 for Desktop business card holders having solar-powered moving parts
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Bobble head dolls
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:
Tracked Text Description: [Bobble head dolls], Solar-powered bobble head dollsClass 028 for Solar-powered bobble head dolls
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)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /andrea l hirst 55269/     Date: 03/04/2009
Signatory's Name: Andrea L. Hirst
Signatory's Position: Asst. General Counsel, IP

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: 77494877
Internet Transmission Date: Wed Mar 04 22:09:23 EST 2009
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2009030422092313
6779-77494877-4408e5e37f06a1a5ac0137d773
e45d11046-N/A-N/A-20090304220306894107