Response to Office Action

 This communication is in response to the Office Action dated July 10, 2006. The examining attorney has refused to register our mark, Serial Number 78794636 for BiNK, under Trademark Act Section 2(d), 15 U.S.C. based on the likelihood of confusion with the mark in U.S. Registration No. 2743922. Reconsideration is respectfully requested. The examining attorney concluded that applicant's proposed mark was confusingly similar based on these three "most relevant" factors: (A) "similarity of the marks"; (B) "similarity of the goods and/or services"; and (C) "similarity of trade channels of the goods and/or services". We respectfully disagree with the examining attorney's determination, and will discuss each of these most relevant factors, in turn. (A) The marks are similar, but differ in certain material respects. First, applicant's mark utilizes a lower case "i" in the word "BiNK". Although this distinction may not affect the sound, it does affect the appearance, which is a relevant criteria for comparison. Second, applicant's proposed mark is a design, prominently featuring a baby's pacifier as the dot above the lower case "i", and utilizing traditional baby colors of pink and blue. These design elements in the proposed mark not only change the appearance of the mark, they also change the mark's meaning and connotation. Accordingly, given the other relevant factors, which qualify how the marks are actually utilized, we believe there is no likelihood of confusion between applicant's mark and registrant's mark. (B) The goods and/or services, to the extent they were believed similar by the examining attorney, are now less similar. First, as suggested by the examining attorney, we have amended our description of services to more specifically describe the applicant's services as "retail store services featuring baby's clothing, toys, furniture, and accessories in International Class 35." This amended description more clearly points out the differences between applicant's class 35 services application and registrant's class 25 goods registration. The examining attorney also notes the possibility of some similarity in goods and services, between applicant's retail services and registrant's goods, explaining that "[t]here is no indication whether the registrant's good are limited to adult goods; therefore, the registrant is presumed to make goods for all ages". In commerce, however, this potential similarity is unlikely to confuse anyone. As noted above, the applicant's word "BiNK" is further clarified by the design elements of a baby's pacifier and baby pink and blue colors; the applicant's proposed design mark has little likelihood of confusion with registrant's goods, namely "shirts, hats, pants and shoes". An examination of the registrant's goods, including by reference to their website, shows hard-edged, surf- and skate-boarding products. Registrant's products are simply not goods marketed, in any way, to consumers searching for baby products. As discussed below, this distinction in trade channels and customers eliminates any theoretical confusion between applicant's services and registrant's goods. (C) The trade channels of the goods and/or services are also not similar. The same purchasers are not likely to encounter applicant's goods and/or services and registrant's goods and/or services under circumstances that could give rise to the mistaken belief that the goods and or services come from a common source. Even in cases where marks were virtually identical, courts have held that if goods and services are marketed through different channels, and if different customer were targeted, little likelihood of confusion exists. For example, in Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q. 1156, (as cited on "The United States Patent and Trademark" website), LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising service namely the formulation and design of advertising copy and literature in the plumbing field. The trade channels marketed, and the consumers targeted, in this case are clearly separate, eliminating any chance of confusion. First, as noted, applicants wish to register their mark under class 35, a service class pertaining to retail store services featuring baby products as listed in the amended description of goods. On the other hand, registrant's mark is registered in goods class 25 restricted to clothing, footwear and headwear. In other words, the registrant's mark is for clothing marketed to consumers wishing to purchase a specific type of clothing held out by the company as their line of merchandise, whereas the applicant's proposed mark represents a retail store, marketed to consumers wishing to browse a line of baby items. Second, the prospective consumers targeted by applicant for its retail store services exhibit an extremely high degree of sophistication and care in choosing its essential baby gear products, which the courts have held to be a relevant inquiry. See, for example, McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 (2d Cir. 1970). Purchasers of goods for babies, perhaps our most cherished treasures as humans, are notoriously fussy and discriminating. We strongly believe, especially coupled with the amendments to this application, that these sophisticated consumers will clearly be able to differentiate between registrants mark for a clothing line and applicants mark for a retail store selling a line of baby's items. Conclusion Accordingly, the Applicant respectfully requests that this application is in condition for publication and favorable action is requested. Respectfully submitted, Steven J. Spiegel, Esq. Spiegel & Associates, LLC 

Response to Office Action

To the Commissioner for Trademarks:

 This communication is in response to the Office Action dated July 10, 2006. The examining attorney has refused to register our mark, Serial Number 78794636 for BiNK, under Trademark Act Section 2(d), 15 U.S.C. based on the likelihood of confusion with the mark in U.S. Registration No. 2743922. Reconsideration is respectfully requested. The examining attorney concluded that applicant's proposed mark was confusingly similar based on these three "most relevant" factors: (A) "similarity of the marks"; (B) "similarity of the goods and/or services"; and (C) "similarity of trade channels of the goods and/or services". We respectfully disagree with the examining attorney's determination, and will discuss each of these most relevant factors, in turn. (A) The marks are similar, but differ in certain material respects. First, applicant's mark utilizes a lower case "i" in the word "BiNK". Although this distinction may not affect the sound, it does affect the appearance, which is a relevant criteria for comparison. Second, applicant's proposed mark is a design, prominently featuring a baby's pacifier as the dot above the lower case "i", and utilizing traditional baby colors of pink and blue. These design elements in the proposed mark not only change the appearance of the mark, they also change the mark's meaning and connotation. Accordingly, given the other relevant factors, which qualify how the marks are actually utilized, we believe there is no likelihood of confusion between applicant's mark and registrant's mark. (B) The goods and/or services, to the extent they were believed similar by the examining attorney, are now less similar. First, as suggested by the examining attorney, we have amended our description of services to more specifically describe the applicant's services as "retail store services featuring baby's clothing, toys, furniture, and accessories in International Class 35." This amended description more clearly points out the differences between applicant's class 35 services application and registrant's class 25 goods registration. The examining attorney also notes the possibility of some similarity in goods and services, between applicant's retail services and registrant's goods, explaining that "[t]here is no indication whether the registrant's good are limited to adult goods; therefore, the registrant is presumed to make goods for all ages". In commerce, however, this potential similarity is unlikely to confuse anyone. As noted above, the applicant's word "BiNK" is further clarified by the design elements of a baby's pacifier and baby pink and blue colors; the applicant's proposed design mark has little likelihood of confusion with registrant's goods, namely "shirts, hats, pants and shoes". An examination of the registrant's goods, including by reference to their website, shows hard-edged, surf- and skate-boarding products. Registrant's products are simply not goods marketed, in any way, to consumers searching for baby products. As discussed below, this distinction in trade channels and customers eliminates any theoretical confusion between applicant's services and registrant's goods. (C) The trade channels of the goods and/or services are also not similar. The same purchasers are not likely to encounter applicant's goods and/or services and registrant's goods and/or services under circumstances that could give rise to the mistaken belief that the goods and or services come from a common source. Even in cases where marks were virtually identical, courts have held that if goods and services are marketed through different channels, and if different customer were targeted, little likelihood of confusion exists. For example, in Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q. 1156, (as cited on "The United States Patent and Trademark" website), LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising service namely the formulation and design of advertising copy and literature in the plumbing field. The trade channels marketed, and the consumers targeted, in this case are clearly separate, eliminating any chance of confusion. First, as noted, applicants wish to register their mark under class 35, a service class pertaining to retail store services featuring baby products as listed in the amended description of goods. On the other hand, registrant's mark is registered in goods class 25 restricted to clothing, footwear and headwear. In other words, the registrant's mark is for clothing marketed to consumers wishing to purchase a specific type of clothing held out by the company as their line of merchandise, whereas the applicant's proposed mark represents a retail store, marketed to consumers wishing to browse a line of baby items. Second, the prospective consumers targeted by applicant for its retail store services exhibit an extremely high degree of sophistication and care in choosing its essential baby gear products, which the courts have held to be a relevant inquiry. See, for example, McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 (2d Cir. 1970). Purchasers of goods for babies, perhaps our most cherished treasures as humans, are notoriously fussy and discriminating. We strongly believe, especially coupled with the amendments to this application, that these sophisticated consumers will clearly be able to differentiate between registrants mark for a clothing line and applicants mark for a retail store selling a line of baby's items. Conclusion Accordingly, the Applicant respectfully requests that this application is in condition for publication and favorable action is requested. Respectfully submitted, Steven J. Spiegel, Esq. Spiegel & Associates, LLC