Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78652957 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

RESPONSE

In response to the rejection noted under Trademark Act Section 2(d), Applicant respectfully submits that the mark cited is not likely to be confused with Registrant’s mark, considering the differences in the marks, the goods on which the marks are used and the channels of trade.  Indeed, Applicant has obtained a Consent Agreement from the owner of the U.S. registration which has been cited.  A copy of the Consent Agreement between Applicant and the owner of this mark is attached hereto as Exhibit A.

 

The Trademark Trial and Appeal Board has observed that the existence of a Consent Agreement which contains (1) a consent to registration coupled with (2) differences in the goods and marks and (3) an agreement by the parties to remain clear of each other’s trademarks is substantial evidence to the lack of a likelihood of confusion.  See, In Re Lowes Theater, Inc., 197 USPQ 183 (TTAB 1977).  The Consent Agreement between Applicant and Softpac Industries, Inc. contains a consent to registration coupled with a difference in the goods and marks sold and used by Applicant and Softpac Industries, Inc., and an agreement between the parties to remain clear of each other’s trademark use in the market.  Consent agreements such as these are to be accorded great weight.  In re E.I. DuPont Dememours & Co., 476 F.2d 1357, 1386 (CCPA 1973); Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de Brands, Inc., 811 F.2d 1479 (Fed. Cir. 1987); In re N.A.D. Inc., 754 F.2d 1996 (Fed. Cir. 1985).  Indeed, the Federal Circuit has stated that it is “highly unlikely that [the consenting parties] will have deliberately created a situation in which the source of their respective products would be confused by their customers.”  Id.

 

For the foregoing reasons, Applicant respectfully requests that the above-referenced potential rejection be withdrawn and that this application be approved for publication.

Applicant reserves the right to respond to the potential 2(d) rejection based upon the pending application cited by the Examining Attorney, if and when, the pending application is registered.

 

Evidence
Evidence in the nature of Consent agreement has been attached.
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 030 for ENERGY CHEWS
Original Filing Basis: 1(b).
Proposed: Class 030 for CONFECTIONS, NAMELY, ENERGY CHEWS

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: /mvallone/     Date: 07/17/2006
Signatory's Name: Melissa A. Vallone
Signatory's Position: Attorney
        
Serial Number: 78652957
Internet Transmission Date: Mon Jul 17 08:06:36 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006071708063623
7129-78652957-332c9797821882b9146296a25d
93682601a-N/A-N/A-20060717075839076115