| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78811852 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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In response to the Office Action dated August 2, 2006, in which the statutory period for response is set to expire six (6) months later, Applicant makes the following amendment and remarks. REMARKS 2(d) Refusal Based on Prior Registrations The Examiner asserts a possible likelihood of confusion between Applicant’s mark and the marks appearing in U.S. Registration Nos. 0217759, 0889444, 2044847, 2294806 and 2383129, for the marks PETER PAN and PETER PAN PLUS in the name of Conagra Brands, Inc. Applicant has reviewed and evaluated these registrations, and believes that confusion is not substantially likely with respect to either of the marks cited in part because of the differences in the goods. That, as well as additional reasons for no likely confusion are discussed below.
LIKELIHOOD OF CONFUSION FACTORS As the Examiner points out, the principal factual considerations pertinent to the issue of likelihood of confusion are collected in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). However, not all of the duPont factors are relevant or of similar weight in every case. The relevant factors with respect to the marks here at issue include the following duPont factors: (2) the similarity or dissimilarity and nature of the goods with which the marks are associated, (7) the nature and extent of any actual confusion, (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion, and (9) the variety of goods on which a mark is or is not used. DIFFERENCES IN THE GOODS Although the marks are similar, they have nothing in common with respect to the goods with which they are identified. Here, the goods involved are sufficiently different in all essential respects that neither their concurrent use nor the fact of their sale through common channels is of sufficient weight to affect materially the question of consumer confusion. Conagra’s marks are registered in connection with snack foods, specifically, peanut butter, nuts, crackers containing peanut butter, candy and cookies, whereas Applicant’s mark is used for staple goods, namely, flour, cornmeal, and flour and cornmeal baking mixes. Applicant is of the opinion that its goods do not belong in the same general class of merchandise as those of Conagra’s goods. Although the respective goods may be sold in the same channels of trade, it is a matter of common knowledge that institutions such as grocery stores, chain stores and the like sell an almost unlimited variety of articles in unrelated lines of trade and their sale of such goods is not significant where there is no likelihood of confusion as to the origin of the goods or that potential purchasers would be deceived. Where the goods to which the marks of the parties are respectively applied being of different descriptive properties, the similarity of the marks becomes immaterial. General Mills, Inc. v. Freed, 1171, 89 F.2d 664, 33 USPQ 386, 388 (24 C.C.P.A.). A related factor to be considered is that there is no competition among the sale of the products, because the products under the marks are dissimilar (snack foods vs. staple goods). This factor also supports a finding of no likelihood of confusion. Where the goods or services are not competing, the similarity of the marks is only one of a number of factors considered in determining likelihood of confusion. When the parties deal in non-competing goods or services, courts must look beyond the trademark to the nature of the products themselves, and to the context in which they are marketed and sold. Fisons Horticulture Inc. v. Vigoro Industries Inc., 31 USPQ2d 1592, 1596 (3d. Cir. 1994).
NO ACTUAL CONFUSION AND LENGTH OF TIME OF CONCURRENT USE Also applicable in the confusion analysis are the seventh and eight duPont factors, the nature and extent of any actual confusion and the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant is the owner of Trademark Registration Nos. 0691365 and 0981680, for the marks PETER PAN and MORRISON’S PETER PAN, registered in connection with flour and cornmeal. These marks have been in use since 1936 and federally registered since 1960 and 1974, respectively. In more than 70 years of concurrent use of the PETER PAN marks, actual consumer confusion as to the source of the goods under these marks has not been an issue. Concurrent use of two marks over a substantial length of time without actual confusion strongly suggests that there is no likelihood of confusion. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 377; 207 USPQ 465, 465 (1st Cir. 1980). [L]ack of actual confusion over so many years must be considered as supportive of a finding that confusion is not likely in the future. King Candy Co. v. Eunice King’s Kitchen, Inc. 182 USPQ 108, 109-110 (C.C.P.A. 1974). Attached is a Declaration from Greg Flowers, Regional Sales Manager – Consumer Products Division of The Morrison Milling Company, attesting to the fact that there has been no instances of actual confusion in the nature of misdirected mail, misdirected telephone calls, misdirected payments or invoices by consumers during his tenure of 18 years with the company. Moreover, it does not appear that Conagra believes there is a likelihood of confusion, as it has raised no objections to registration of Applicant’s marks.
DOCTRINE OF EXPANSION The protection that the law gives the owner of a trademark is not confined to the goods upon which it is, or has been, used by the owner, but also extends to products that would be reasonably thought by the buying public to come from the same source if sold under the same mark. A trademark owner has the right to extend its mark to new products that may be a natural outgrowth of the trademarked products. This doctrine, often called “expansion of business” doctrine”, allows for the sale of new goods in expanded line of business. Artcraft Novelties Corporation v. Baxter Lane Company of Amarillo. 216 USPQ 654, 655-656 (5th Cir. 1982). The goods identified in the instant application, i.e., flour and corn meal mixes, namely, biscuit mix, pancake mix, corn bread mix, and French doughnut mix, are natural expansions of the goods of Applicant’s prior registrations, flour and corn meal. Moreover, an assessment of likelihood of confusion requires consideration of the likelihood that Conagra would “bridge the gap”, that is, the likelihood that it would expand its products under its PETER PAN mark to include staple goods. As expansions of its products under the mark have remained in the snack foods field, that is from peanut butter to crackers containing peanut butter, candy and cookies, it is not likely that there are plans to bridge the gap into staple goods.
POTENTIAL 2(D) REFUSAL BASED ON U.S. APPLICATION NO. 76/597,256 The Examiner has cited Application No. 76/597,256 as a potential bases for a 2(d) refusal. Applicant defers argument on this issue until such time, if ever, when this application matures to registration and the Examiner makes an actual 2(d) refusal.
CONCLUSION Applicant requests that the refusal of registration be reconsidered and the instant application be approved for publication.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_151213189179-173932768_._Declaration.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT12\788\118 \78811852\xml1\ROA0002.JP G |
| DESCRIPTION OF EVIDENCE FILE | |
| ADDITIONAL STATEMENTS SECTION | |
| PRIOR REGISTRATION(S) | "Applicant claims ownership of U.S. Registration Number(s) 0981680, 0691365." |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Paul C. Van Slyke/ |
| SIGNATORY'S NAME | Paul C. Van Slyke |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 02/02/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 02 19:00:15 EST 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20070202190015251857-788 11852-36065442d62de6767d8 7bc6889415d0bed7-N/A-N/A- 20070202173932768714 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
In response to the Office Action dated August 2, 2006, in which the statutory period for response is set to expire six (6) months later, Applicant makes the following amendment and remarks.
REMARKS
2(d) Refusal Based on Prior Registrations
The Examiner asserts a possible likelihood of confusion between Applicant’s mark and the marks appearing in U.S. Registration Nos. 0217759, 0889444, 2044847, 2294806 and 2383129, for the marks PETER PAN and PETER PAN PLUS in the name of Conagra Brands, Inc. Applicant has reviewed and evaluated these registrations, and believes that confusion is not substantially likely with respect to either of the marks cited in part because of the differences in the goods. That, as well as additional reasons for no likely confusion are discussed below.
LIKELIHOOD OF CONFUSION FACTORS
As the Examiner points out, the principal factual considerations pertinent to the issue of likelihood of confusion are collected in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). However, not all of the duPont factors are relevant or of similar weight in every case. The relevant factors with respect to the marks here at issue include the following duPont factors: (2) the similarity or dissimilarity and nature of the goods with which the marks are associated, (7) the nature and extent of any actual confusion, (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion, and (9) the variety of goods on which a mark is or is not used.
DIFFERENCES IN THE GOODS
Although the marks are similar, they have nothing in common with respect to the goods with which they are identified. Here, the goods involved are sufficiently different in all essential respects that neither their concurrent use nor the fact of their sale through common channels is of sufficient weight to affect materially the question of consumer confusion. Conagra’s marks are registered in connection with snack foods, specifically, peanut butter, nuts, crackers containing peanut butter, candy and cookies, whereas Applicant’s mark is used for staple goods, namely, flour, cornmeal, and flour and cornmeal baking mixes. Applicant is of the opinion that its goods do not belong in the same general class of merchandise as those of Conagra’s goods. Although the respective goods may be sold in the same channels of trade, it is a matter of common knowledge that institutions such as grocery stores, chain stores and the like sell an almost unlimited variety of articles in unrelated lines of trade and their sale of such goods is not significant where there is no likelihood of confusion as to the origin of the goods or that potential purchasers would be deceived. Where the goods to which the marks of the parties are respectively applied being of different descriptive properties, the similarity of the marks becomes immaterial. General Mills, Inc. v. Freed, 1171, 89 F.2d 664, 33 USPQ 386, 388 (24 C.C.P.A.).
A related factor to be considered is that there is no competition among the sale of the products, because the products under the marks are dissimilar (snack foods vs. staple goods). This factor also supports a finding of no likelihood of confusion. Where the goods or services are not competing, the similarity of the marks is only one of a number of factors considered in determining likelihood of confusion. When the parties deal in non-competing goods or services, courts must look beyond the trademark to the nature of the products themselves, and to the context in which they are marketed and sold. Fisons Horticulture Inc. v. Vigoro Industries Inc., 31 USPQ2d 1592, 1596 (3d. Cir. 1994).
NO ACTUAL CONFUSION AND LENGTH OF TIME OF CONCURRENT USE
Also applicable in the confusion analysis are the seventh and eight duPont factors, the nature and extent of any actual confusion and the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant is the owner of Trademark Registration Nos. 0691365 and 0981680, for the marks PETER PAN and MORRISON’S PETER PAN, registered in connection with flour and cornmeal. These marks have been in use since 1936 and federally registered since 1960 and 1974, respectively. In more than 70 years of concurrent use of the PETER PAN marks, actual consumer confusion as to the source of the goods under these marks has not been an issue. Concurrent use of two marks over a substantial length of time without actual confusion strongly suggests that there is no likelihood of confusion. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 377; 207 USPQ 465, 465 (1st Cir. 1980). [L]ack of actual confusion over so many years must be considered as supportive of a finding that confusion is not likely in the future. King Candy Co. v. Eunice King’s Kitchen, Inc. 182 USPQ 108, 109-110 (C.C.P.A. 1974).
Attached is a Declaration from Greg Flowers, Regional Sales Manager – Consumer Products Division of The Morrison Milling Company, attesting to the fact that there has been no instances of actual confusion in the nature of misdirected mail, misdirected telephone calls, misdirected payments or invoices by consumers during his tenure of 18 years with the company.
Moreover, it does not appear that Conagra believes there is a likelihood of confusion, as it has raised no objections to registration of Applicant’s marks.
DOCTRINE OF EXPANSION
The protection that the law gives the owner of a trademark is not confined to the goods upon which it is, or has been, used by the owner, but also extends to products that would be reasonably thought by the buying public to come from the same source if sold under the same mark. A trademark owner has the right to extend its mark to new products that may be a natural outgrowth of the trademarked products. This doctrine, often called “expansion of business” doctrine”, allows for the sale of new goods in expanded line of business. Artcraft Novelties Corporation v. Baxter Lane Company of Amarillo. 216 USPQ 654, 655-656 (5th Cir. 1982). The goods identified in the instant application, i.e., flour and corn meal mixes, namely, biscuit mix, pancake mix, corn bread mix, and French doughnut mix, are natural expansions of the goods of Applicant’s prior registrations, flour and corn meal.
Moreover, an assessment of likelihood of confusion requires consideration of the likelihood that Conagra would “bridge the gap”, that is, the likelihood that it would expand its products under its PETER PAN mark to include staple goods. As expansions of its products under the mark have remained in the snack foods field, that is from peanut butter to crackers containing peanut butter, candy and cookies, it is not likely that there are plans to bridge the gap into staple goods.
POTENTIAL 2(D) REFUSAL BASED ON U.S. APPLICATION NO. 76/597,256
The Examiner has cited Application No. 76/597,256 as a potential bases for a 2(d) refusal. Applicant defers argument on this issue until such time, if ever, when this application matures to registration and the Examiner makes an actual 2(d) refusal.
CONCLUSION
Applicant requests that the refusal of registration be reconsidered and the instant application be approved for publication.
