Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78856667 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

No Likelihood of Confusion with Cited Mark

The Examining Attorney has refused registration of the Applicant's mark on the grounds of likelihood of confusion with Reg. No. 1990102[1] and Reg. No. 2314371.   The former is a combined word and design mark (the "Snif Mark") and the later is solely a design mark (the "Pestco Mark").  Both feature skunks.

Courts have specifically held that the use of even identical marks in connection with products or services that differ sufficiently from one another may prevent any likelihood of confusion between the uses of the marks.  See, e.g., Taj Mahal Enterprises Ltd. v. Trump, 745 F. Supp. 240 (D.N.J. 1990) (no likelihood of confusion between use of TAJ MAHAL for restaurant and use for casino and hotel).  This is true even when the two identical marks are used for the same field or general category of products. Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir. 1983) (no likelihood of confusion between use of ASTRA for local anesthetic preparation versus ASTRA computerized blood analyzer machine).  The Principal Register is rife with examples of marks that co-exist despite being identical and being applied to related goods or services in the same class.  The chart below summarizes only a few of the many examples:

The Principal Register also includes various examples of design marks and word marks which are literal equivalents, and are registered for similar goods but which nonetheless co-exist.  For example, the mark PENGUIN'S (Reg. No. 1504198) is registered in Class 30 for "frozen confections, including frozen yogurt with and without toppings and related products such as sundaes and milk shakes for consumption on or off the premises" as does  a later registration (Reg. No. 3010613) for the design mark of a penguin holding an ice cream cone in Class 30 for "ice cream sold in retail outlets."   The mark LITTLE PENGUIN (Reg. No. 2970813) is registered in Class 33 for "wines" as is the design mark of a penguin (Reg.  No. 2998212) in Class 33 for "wine."  The mark MOOSE MUNCH  (Reg. No. 2977625) is registered in Class 30 for "candy, coffee and bakery desserts" as is the design mark of a moose (Reg. No. 3029062) in Class 30 for "candy".  The mark DEER GEAR[3] (Reg. No. 3186718) is registered in Class 25 for "hats, short-sleeved or long sleeved t-shirts" as is the design mark of a deer (Reg. No. 32082741) in Class 25 for "clothing, namely shirts, sweatshirts, jackets, socks [and] hats."  The mark TIGER (Reg. No. 2792139) is registered in Class 6 for "pipes, tubes, bellows and manually operated valves of metal for automotive, aerospace and medical industries" as is the design mark of a tiger (Reg. No. 2986378) in Class 6 for "metal casters."  The mark TIGER BRAND (Reg. No. 0627644) registered in Class 2 for "paints (ready-mixed, semi-paste and paste form); varnishes; paint enamels; lacquers; thinners for paints, varnishes, paint enamels, and lacquers; and paint and varnish removers" as is the combined design and word mark of a tiger (Reg. No. 1474665) and the design mark of a tiger (Reg. No. 2090824) in Class 2 for "lacquers, paints and paint powders for use on furniture, walls, floors, machinery, appliances, building parts, automobile parts and accessories, sporting goods, pipes, etc."  and "liquid color dispersions used in manufacturing for coloring of plastics" respectively. (Copies of the TARR database printouts for these marks are annexed hereto).

The examining attorney argues that under the doctrine of legal equivalents, a pictorial representation and its literal equivalent may be found confusingly similar.  This principle must not be literally and indiscriminately applied.  Spaulding Bakeries Inc. v. Interstates Brands Corporation, 209 U.S.P.Q. 355 (TTAB 1980) (holding that there was no likelihood of confusion between the word mark OLD MILL for bread and a pictorial representation of a mill for bread).  Indeed, the foregoing examples of coexisting registrations demonstrate that the Patent and Trademark Office does not uniformly apply the theory to bar registration.  The theory underlying the doctrine of legal equivalents is that consumers often do not have the opportunity to compare the marks side-by-side, but rather must rely on their memories which are generally hazy, and as a result a pictorial representation may trigger the recollection of its literal equivalents or vice versa.  Id. at 356.  Here, given that the marks, when analyzed as a whole, produce a different overall impression, it is unlikely that consumers would equate the single word “SKUNK” with the cited registrations for the reasons set forth below.

While the Snif Mark has a prominent design element, the mark’s literal element is "SNIF" which should be considered to make a significant impression on consumers.  In analyzing these marks, the examiner is not free simply to ignore the literal element of the Snif Mark.  Indeed, the literal portions of marks are generally held to be the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); and In re Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB 1978).  For this reason, greater weight should be given to the literal portions of the Snif Mark in determining whether there is a likelihood of confusion.  When the Snif Mark is examined as a whole versus applicant’s SKUNK mark the distinctions are clear.  In addition to the term “snif,” the design in the Snif Mark depicts an upright skunk holding some kind of rock or crystal.  This is surely not the equivalent of the word “skunk.”

With regard to the Pestco Mark, the examiner is also not free to view the mark solely as if it were the equivalent word mark.  “The question of likelihood of confusion entails consideration of the entire marks, where and how those marks are used and whether or not there are other distinguishing aspects, such as accompanying logos.”  Basic American Medical v. American Medical Int’l, 649 F. Supp. 885, 891 (S.D. Ind. 1986) (BAMI and AMI not confusingly similar, even though both used in the health care industry), citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 , 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The design in the Pestco Mark is a skunk holding a flower, looking upward with a pleasant expression and is encircled by a bull's eye. Both of these design marks are sufficiently distinct from each other and the applicant's.  Moreover, the two design marks co-exist and were registered for the same class of products.

Thus, when properly viewed in their entireties, the overall commercial impressions created by the Snif Mark and Pestco Mark and the applicant’s mark are clearly distinct. 

Finally, there is no evidence in the record as to how consumers will understand, recall or call for the products under the cited marks.  If the examiner's assumption is that consumers would refer to each of the cited marks as skunk, then there is no basis for their coexistence on the register.  However, these marks do coexist, and the record is devoid of evidence that consumers view either mark as the pictorial equivalent of SKUNK. 

For the foregoing reasons, there is no likelihood of confusion between the pending mark and the cited marks and the pending application should be approved for publication. 

Identification of Goods

The applicant adopts the following identification: 

Perfuming preparations for the atmosphere, namely, room fragrances, room perfume sprays; potpourri, room perfume sprays; preparations for perfuming or fragrancing the air namely, incense sachets, incense sprays, essential oils, potpourri and room perfume sprays, in International Class 3. 

Evidence
Evidence in the nature of TESS pages of cited marks has been attached.
JPG file(s):
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_6692392-175106918_._PENGUIN_S.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._PRNGUIN_DESIGN_613.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1-6692392-175106918_._LITTLE_PENGUIN.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1-6692392-175106918_._PENGUIN_IMAGE_212.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._MOOSE_MUNCH.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._MOOSE_IMAGE_062.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._DEER_GEAR.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._TIGER.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._TIGER_DESIGN.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._TIGER_BRAND.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._TIGER_665.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._TIGER_824.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6692392-175106918_._deer_design_741.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 003 for Perfuming preparations for the atmosphere; potpourri, room perfume sprays; preparations for perfuming or fragrancing the air
Original Filing Basis: 1(b).
Proposed: Class 003 for Perfuming preparations for the atmosphere, namely, room fragrances, room perfume sprays; preparations for perfuming or fragrancing the air, namely, incense sachets, incense sprays, essential oils, potpourri and room perfume sprays
Filing Basis: 1(b).

Response Signature
Signature: /mark lerner/     Date: 02/21/2007
Signatory's Name: Mark Lerner
Signatory's Position: Attorney of Record
        
Serial Number: 78856667
Internet Transmission Date: Wed Feb 21 18:24:01 EST 2007
TEAS Stamp: USPTO/ROA-XX.X.XX.XX-2007022118240168216
5-78856667-360eaf7ba76725dded2d9d92a63f1
bcf0-N/A-N/A-20070221175106918714