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. 77619792 has been amended as follows:

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

 TRADEMARK

 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

In re trademark application of: LASTOCHKA, INC.   Serial No.        77/619,792   Filed:               November 21, 2008   Mark:               ACTIVA

Law Office: 107   Examining Attorney:  Nicholas Altree

 

Burbank, California

                                                                                          September 3, 2009

 

RESPONSE TO OFFICE ACTION

 

Hon. Commissioner for Trademarks

Alexandria, VA, 22313

 

This is a response to the Office Action mailed March 3, 2009.

Rejection Under 15 U.S.C. § 1052(d)

            The examining attorney has refused registration of Applicant's mark, "ACTIVA" under Section 2(d), because Applicant's mark is likely to cause confusion with respect to the registered mark "ACTIVIA," U.S. Registration No. 3334973.  Applicant respectfully traverses this rejection.

As a basis for the present rejection, the examining attorney concluded that the products of the Applicant and the registrant are "similar in kind and/or closely related." This statement may be true if the registrant was using the mark to sell water. To that end, Applicant respectfully disagrees and relies on the accepted principle that Registration No. 3334973 is not using the mark for water or water-related products. Citing the registrant's Products website page (http://www.activia.us.com/products_main.asp), registrant does not show use of the mark with water or water-related products.  When searching Google with the words "Activia Water" (http://www.google.com/search?hl=en&q=Activia+Water&aq=f&oq=&aqi=g-sx1), the mark is not used with any water or water-related products. Conversely, Applicant seeks registration in relation to "Aerated Water, Bottled artesian water; Bottled drinking water, Bottled water; Drinking water; Drinking water with vitamins; Energy drinks; Flavored bottled water; Flavored waters; Flavoured mineral water; Fruit drinks and fruit juices; Fruit flavoured drinks; Mineral and carbonated waters; Purified bottled drinking water; Soda water; Sparkling water: Spring Water." Therefore, Applicant's narrow listing of goods would not conflict with the goods actually being used under the prior ACTIVIA marks.  

 The examining attorney also cites the closeness of the word portion of the marks in concluding that the marks cause "confusion." Comparing the two marks, it is clear that the spelling of the registrant's mark and Applicant's mark are not identical.  The registrant's mark "ACTIVIA" is spelled differently than the Applicant's mark "ACTIVA". This difference is magnified when considering the two marks are used on different products, as previously stated. Yogurt and water are not shown to act as substitute goods, thus not "commercially related." To that end, the marks will not "confuse people into believing that the goods and/or series they identify come from the same source." In re West Point-Pepperell, Inc., 468 F.2d 200,201, 175 USPQ 558,558-59 (C.C.P.A. 1972) TMEP §1207.01(b).

Moreover, Applicant's mark is limited to the stylized form and therefore distinct when compared to other marks. This stylization narrows the scope of the Applicant's mark and deters "confusion" and/or comparison to registrant's mark, among others. Registrant's mark uses upper case lettering and incorporates a graphically complex sun and arrow image of the "I".  In contrast, Applicant's mark uses lower case lettering and incorporates a simple swirled underline. Also, registrant's mark incorporates elements of shading and blurring in its design; whereas Applicant's mark uses a flat design, without the use of shading and blurring.

It has been shown that Applicant's and registrant's products are not similar in kind, because registrant is not using the marks for water related products.  It has been further shown that Applicant's limited protection of the stylized form is not similar in kind to the registered stylized versions cited by the examining attorney.  Hence, the marks will not confuse people into believing the marks come from the same source and concurrent registration should be allowed.

 

                                                            Respectfully submitted,

 

Italia IP

Attorneys for Applicant

 

                                                            /James A. Italia/

                                                By:      James A. Italia

 

 

SIGNATURE(S)
Response Signature
Signature: /James A. Italia/     Date: 09/03/2009
Signatory's Name: James A. Italia
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: 77619792
Internet Transmission Date: Thu Sep 03 20:15:35 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200909032015352
03733-77619792-430d7c977b6e0af66de45e75b
f563d2778-N/A-N/A-20090903201129334812