| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78846062 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Dear Mr. Fahrenkopf:
Applicant responds to the Trademark Office Action dated May 12, 2007, issued in the above-identified application. In the Action, the Examiner maintained and made final his refusal to register under Section 2(d) based on U.S. Registration No. 2,510,710. Applicant and Registrant now have a signed Consent Agreement and respectfully request that the Examiner reconsider.
R E M A R K S
The Trademark Attorney determined that there was a likelihood of confusion between Applicant's mark and Registration No. 2,510,710.
Vector Snowboards, Inc., dba Venture Company and Venture Snowboards, the owner of Registration No. 2,510,710, and Applicant have conferred, and believe themselves that there is no likelihood of confusion after considering the relevant factors used when determining whether a likelihood of confusion exists under Section 2(d), no one of which is determinative. See In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). The factors set forth in du Pont, supra, and embodied in T.M.E.P. section 1207.01 include:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; 2. The similarity or dissimilarity and nature of the goods or services as described in the application or registration; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which and buyers to whom sales are made, i.e. “impulse” versus careful, sophisticated purchasing; 5. The fame of the prior mark; 6. The number and nature of similar marks in use on similar goods; 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 extent of potential confusion, i.e. whether de minimis or substantial.
In this instance, the marks have coexisted in the marketplace for six years with no evidence of actual or likely confusion. While not determinative, the existence of no actual confusion is strong evidence of no likely confusion.
To date, and to Applicant’s best knowledge, no complaints of confusion have arisen. This is not surprising, due to the fact that the trade channels of snowboard and skateboard trucks and decks involve discriminating purchasers with a high level of product and brand awareness and consumers are fully aware that snowboards and skateboards may be sold in the same retail stores. However, snowboards and skateboards are not interchangeable in nature and are therefore in separate trade channels as they satisfy different needs of consumers.
Although not determinative, concurrent use without confusion is a factor to be considered in determining no likelihood of confusion. See G.H. Mumm & Cie v. Desnoes & Gedded Ltd., 917 F.2d 1292 (C.A.F.C. 1990); Georgia-Pacific Corp. v. General Paper Corp of Pittsburgh, 196 U.S.P.Q. 762 (T.T.A.B. 1977), Aff’d in unpub. opn., appeal No. 78-534 (CCPA 1978).
Based on the fact that the trademark owners believe there is no likelihood of confusions, they have accordingly agreed that each party may register its respective mark, and have agreed to take whatever steps are necessary to insure that no confusion arises.
A copy of the parties agreement regarding the respective registration of their marks is enclosed. As such agreements of the parties are entitled to deference, Applicant respectfully requests that the final refusal be withdrawn. See In re Four Seasons Hotels, Ltd., 987 F. 2d 1565 (CAFC 1993); In re E.I. DuPont de Nemours & Co., 476 F. 2d 1357 (CCPA 1973).
CONCLUSION
As no other marks were cited against the application, Applicant respectfully submits that this application is in order for approval and passage to publication. However, if any other issues remain which needs to be addressed, please telephone the undersigned attorney for Applicant before issuing a further action.
Respectfully submitted,
Anne Hiaring, Esq. Attorney of record LAW OFFICE OF ANNE HIARING 711 Grand Avenue, Suite 260 San Rafael, CA 94901 (415) 457-2040 Fax (415) 457-2822 info@hiaringlaw.com |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_16612944195-181210946_._Consent_Agreement_w-Venture_Snowboards_SIGNED_VERSION-.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS2\EXPORT14\788\460\78846062\xml1\ROA0002.JPG |
| \\TICRS2\EXPORT14\788\460\78846062\xml1\ROA0003.JPG | |
| \\TICRS2\EXPORT14\788\460\78846062\xml1\ROA0004.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Consent Agreement |
| CORRESPONDENCE SECTION | |
| NAME | Anne Hiaring, Esq. |
| FIRM NAME | Law Office of Anne Hiaring |
| STREET | 711 Grand Avenue, Suite 260 |
| CITY | San Rafael |
| STATE | California |
| ZIP/POSTAL CODE | 94901 |
| COUNTRY | United States |
| PHONE | (415) 457-2040 |
| FAX | (415) 457-2822 |
| info@hiaringlaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /anne hiaring/ |
| SIGNATORY'S NAME | Anne Hiaring |
| SIGNATORY'S POSITION | Attorney of record. |
| DATE SIGNED | 11/09/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Nov 09 18:21:11 EST 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20071109182111320833-7884 6062-40022ac361fc379a2787 62de8a435804e63-N/A-N/A-2 0071109181210946102 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Dear Mr. Fahrenkopf:
Applicant responds to the Trademark Office Action dated May 12, 2007, issued in the above-identified application. In the Action, the Examiner maintained and made final his refusal to register under Section 2(d) based on U.S. Registration No. 2,510,710. Applicant and Registrant now have a signed Consent Agreement and respectfully request that the Examiner reconsider.
The Trademark Attorney determined that there was a likelihood of confusion between Applicant's mark and Registration No. 2,510,710.
Vector Snowboards, Inc., dba Venture Company and Venture Snowboards, the owner of Registration No. 2,510,710, and Applicant have conferred, and believe themselves that there is no likelihood of confusion after considering the relevant factors used when determining whether a likelihood of confusion exists under Section 2(d), no one of which is determinative. See In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). The factors set forth in du Pont, supra, and embodied in T.M.E.P. section 1207.01 include:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
2. The similarity or dissimilarity and nature of the goods or services as described in the application or registration;
3. The similarity or dissimilarity of established, likely-to-continue trade channels;
4. The conditions under which and buyers to whom sales are made, i.e. “impulse” versus careful, sophisticated purchasing;
5. The fame of the prior mark;
6. The number and nature of similar marks in use on similar goods;
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 extent of potential confusion, i.e. whether de minimis or substantial.
In this instance, the marks have coexisted in the marketplace for six years with no evidence of actual or likely confusion. While not determinative, the existence of no actual confusion is strong evidence of no likely confusion.
To date, and to Applicant’s best knowledge, no complaints of confusion have arisen. This is not surprising, due to the fact that the trade channels of snowboard and skateboard trucks and decks involve discriminating purchasers with a high level of product and brand awareness and consumers are fully aware that snowboards and skateboards may be sold in the same retail stores. However, snowboards and skateboards are not interchangeable in nature and are therefore in separate trade channels as they satisfy different needs of consumers.
Although not determinative, concurrent use without confusion is a factor to be considered in determining no likelihood of confusion. See G.H. Mumm & Cie v. Desnoes & Gedded Ltd., 917 F.2d 1292 (C.A.F.C. 1990); Georgia-Pacific Corp. v. General Paper Corp of Pittsburgh, 196 U.S.P.Q. 762 (T.T.A.B. 1977), Aff’d in unpub. opn., appeal No. 78-534 (CCPA 1978).
Based on the fact that the trademark owners believe there is no likelihood of confusions, they have accordingly agreed that each party may register its respective mark, and have agreed to take whatever steps are necessary to insure that no confusion arises.
A copy of the parties agreement regarding the respective registration of their marks is enclosed. As such agreements of the parties are entitled to deference, Applicant respectfully requests that the final refusal be withdrawn. See In re Four Seasons Hotels, Ltd., 987 F. 2d 1565 (CAFC 1993); In re E.I. DuPont de Nemours & Co., 476 F. 2d 1357 (CCPA 1973).
As no other marks were cited against the application, Applicant respectfully submits that this application is in order for approval and passage to publication. However, if any other issues remain which needs to be addressed, please telephone the undersigned attorney for Applicant before issuing a further action.
Respectfully submitted,
Anne Hiaring, Esq.
Attorney of record
LAW OFFICE OF ANNE HIARING
711 Grand Avenue, Suite 260
San Rafael, CA 94901
(415) 457-2040
Fax (415) 457-2822
info@hiaringlaw.com
