PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
SERIAL NUMBER | 79026645 |
LAW OFFICE ASSIGNED | LAW OFFICE 103 |
MARK SECTION (no change) | |
OWNER SECTION (current) | |
NAME | Wm. Wrigley Jr. Company |
STREET | 410 North Michigan Avenue Chicago, IL 60611 |
COUNTRY | US |
OWNER SECTION (proposed) | |
NAME | Wm. Wrigley Jr. Company |
STREET | 410 North Michigan Avenue |
CITY | Chicago |
STATE | Illinois |
ZIP/POSTAL CODE | 60611 |
COUNTRY | US |
LEGAL ENTITY SECTION (current) | |
TYPE | APPLICANT ENTERED NO DATA |
LEGAL ENTITY SECTION (proposed) | |
TYPE | CORPORATION |
STATE/COUNTRY OF INCORPORATION | Delaware |
ARGUMENT(S) | |
The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), claiming that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,905,518 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant requests that this refusal be withdrawn for the following reasons. In evaluating whether there is a likelihood of confusion between two marks, the comparison must focus on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). When considering the similarity of the marks, all relevant facts pertaining to the appearance and connotation must be considered. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). See also TMEP § 1207.01(b). In this case, when the marks are compared in their entireties and all relevant facts pertaining to their appearance and connotation are considered, it is apparent that there is no likelihood of confusion. Applicant has applied to register the mark PROFESSIONAL, whereas Registrant’s mark is BARILLA PROFESSIONAL & Design. These marks differ significantly in appearance, sound, connotation and commercial impression. With regard to the first two factors, PROFESSIONAL and BARILLA PROFESSIONAL & Design clearly differ in appearance and sound. Although the marks share the term “PROFESSIONAL,” Registrant’s mark contains the additional term “BARILLA” within a distinctive elliptical design, and both terms “BARILLA” and “PROFESSIONAL” are presented in different, stylized fonts. Moreover, “BARILLA” is the first, most dominant portion of the BARILLA PROFESSIONAL & Design mark. When considered together, these differences give Applicant’s and Registrant’s marks a significantly different appearance and sound. The PROFESSIONAL and BARILLA PROFESSIONAL & Design marks also create distinct commercial impressions. The mark BARILLA PROFESSIONAL & Design immediately conjures up the identify of Registrant, Barilla G. E.R. Fratelli Per Azioni. Registrant owns numerous other registration for marks that consist of or comprise the term “BARILLA,” and it has been using such marks for many years. As a result, consumers will naturally perceive products offered under the BARILLA PROFESSIONAL & Design mark as those of Registrant. In contrast, consumers would have no expectation that the mark PROFESSIONAL alone is connected with Registrant. As a result, the marks have different connotations and create distinct commercial impressions. In view of these differences, Applicant submits that the points of difference between the PROFESSIONAL and BARILLA PROFESSIONAL & Design marks are greater than the points of similarity, and as a result, consumers will not be confused by the two marks. Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal. |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 030 |
DESCRIPTION | |
Confectionery, namely chewing gum, bubble gum, candy and mints | |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 030 |
DESCRIPTION | |
Confectionery, namely chewing gum, bubble gum, candy and candy mints | |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /Thomas L. Holt/ |
SIGNATORY'S NAME | Thomas L. Holt |
SIGNATORY'S POSITION | Outside Counsel |
DATE SIGNED | 04/30/2007 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Mon Apr 30 13:32:07 EDT 2007 |
TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0070430133207784833-79026 645-370c4a46c692f98168c1d d1446dd4b2f16-N/A-N/A-200 70430132445598823 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), claiming that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,905,518 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant requests that this refusal be withdrawn for the following reasons.
In evaluating whether there is a likelihood of confusion between two marks, the comparison must focus on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). When considering the similarity of the marks, all relevant facts pertaining to the appearance and connotation must be considered. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). See also TMEP § 1207.01(b). In this case, when the marks are compared in their entireties and all relevant facts pertaining to their appearance and connotation are considered, it is apparent that there is no likelihood of confusion.
Applicant has applied to register the mark PROFESSIONAL, whereas Registrant’s mark is BARILLA PROFESSIONAL & Design. These marks differ significantly in appearance, sound, connotation and commercial impression. With regard to the first two factors, PROFESSIONAL and BARILLA PROFESSIONAL & Design clearly differ in appearance and sound. Although the marks share the term “PROFESSIONAL,” Registrant’s mark contains the additional term “BARILLA” within a distinctive elliptical design, and both terms “BARILLA” and “PROFESSIONAL” are presented in different, stylized fonts. Moreover, “BARILLA” is the first, most dominant portion of the BARILLA PROFESSIONAL & Design mark. When considered together, these differences give Applicant’s and Registrant’s marks a significantly different appearance and sound.
The PROFESSIONAL and BARILLA PROFESSIONAL & Design marks also create distinct commercial impressions. The mark BARILLA PROFESSIONAL & Design immediately conjures up the identify of Registrant, Barilla G. E.R. Fratelli Per Azioni. Registrant owns numerous other registration for marks that consist of or comprise the term “BARILLA,” and it has been using such marks for many years. As a result, consumers will naturally perceive products offered under the BARILLA PROFESSIONAL & Design mark as those of Registrant. In contrast, consumers would have no expectation that the mark PROFESSIONAL alone is connected with Registrant. As a result, the marks have different connotations and create distinct commercial impressions.
In view of these differences, Applicant submits that the points of difference between the PROFESSIONAL and BARILLA PROFESSIONAL & Design marks are greater than the points of similarity, and as a result, consumers will not be confused by the two marks. Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal.