Response to Office Action

PROFESSIONAL

Wm. Wrigley Jr. Company

Response to Office Action

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action


The table below presents the data as entered.

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  Applicant requests that this refusal be withdrawn for the following reasons.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)

Response to Office Action


To the Commissioner for Trademarks:


Application serial no. 79026645 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

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.



Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 030 for Confectionery, namely chewing gum, bubble gum, candy and mints

Proposed: Class 030 for Confectionery, namely chewing gum, bubble gum, candy and candy mints
Filing Basis: Section 66(a).

Procedural Matters/Informalities
Applicant proposes to amend the following:
Original: Wm. Wrigley Jr. Company a(n) having an address of 410 North Michigan Avenue Chicago, IL 60611 , US .
Proposed: Wm. Wrigley Jr. Company, a corporation of Delaware, having an address of 410 North Michigan Avenue Chicago, Illinois US 60611.


Response Signature
Signature: /Thomas L. Holt/     Date: 04/30/2007
Signatory's Name: Thomas L. Holt
Signatory's Position: Outside Counsel

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
Serial Number: 79026645
Internet Transmission Date: Mon Apr 30 13:32:07 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2007043013320778
4833-79026645-370c4a46c692f98168c1dd1446
dd4b2f16-N/A-N/A-20070430132445598823



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