Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85367937 BLACK MAGIC(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85367937) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Examiner's refusal based on likelihood of confusion, Applicant respectfully submits the following. As an initial matter, Applicant has modified the goods and services to further distinguish itself from the cited marks. However, Applicant also notes that the factors that are considered in likelihood of confusion assertions include strength of the mark, proximity of the goods, similarity of the marks, evidence of actual confusion, marketing channels used, the degree of care that is likely to be exercised by that type of purchaser, the defendant's intent when selecting the mark, and the likelihood of expansion of the product lines. AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). Conagra Inc. v. Singleton, 743 F.2d 1508, 1514 (11th Cir. 1984). A review of these elements shows that nearly all of these factors weigh against a likelihood of confusion between cigars and the Applicant's product. Actual Confusion Applicant notes that cigar and hookah tobacco products, while having the similar ingredient of tobacco (only), differ in nearly every other respect. Accordingly, the element of actual confusion will never be met. Cigars are pre-rolled and portable, and consumers have an expectation that they can be consumed right out of the package. Nearly always, there is a cigar case where the user can inspect or examine the cigars before purchase. Furthermore, customers often spend hundreds to thousands of dollars for a single cigar. Such a purchase is made with care, and it is hard to contemplate a customer being confused such that he mistakenly selects and purchases a can of hookah tobacco instead of a cigar. Moreover, in contrast to cigars, hookah tobacco is sold in disk-shaped cans (that do not fit a cigar) and is not inspected before purchase. Hookah tobacco also requires a Hookah pipe, and a fairly extensive knowledge of how to use the pipe and pack the tobacco in the bowl. There is also a several-minute assembly process before it can be consumed. Unlike cigars, hookah tobacco is not portable; it is not something that people can consume while walking down the street. For all of these reasons, Applicant asserts that these products would never be confused for each other. Marketing Channels Used Cigar products and hookah tobacco products are marketed through entirely different channels, and even consumed in entirely different venues. Cigars have their own media, such as Cigar Aficionado, that does not customarily report on the hookah industry. Similarly, Hookah media, such as Inside Hookah (www.insidehookah.com) and Hookah Lounger (www.hookah-lounger.com), focus on hookah products, rather than the cigar industry. Yet another significant factor is the two products are consumed in totally different ways, which leads to different marketing venues. As mentioned above, a cigar purchaser expects to be able to consume his cigar as soon as it is purchased, without having to purchase or carry around any other equipment (like a hookah tobacco pipe). This gives cigars an advantage in venues where hookah tobacco would be disfavored, including airports and convenience stores catered to travelers. Similarly, cigars and hookah tobacco are typically consumed in totally different social venues: either a cigar lounge or a hookah lounge. Applicant asserts it would be totally unacceptable to bring a cigar into a hookah lounge, and it is equally improbable for someone to bring hookah tobacco to a cigar bar. Accordingly, it is highly improbable that one could find both cigars and hookah tobacco sold at a social lounge. These additional factors weigh against any likelihood of confusion. Degree of Care Likely to be Exercised by the Purchaser As noted above, purchasers of cigars typically exercise tremendous care when purchasing their products. Purchasers of hookah tobacco also have extreme particularities for certain flavors. These factors also weigh against any likelihood of confusion.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Hookah tobacco; Molasses tobacco; Smoking tobacco; Tobacco
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Hookah tobacco; Molasses tobacco; Smoking tobacco; TobaccoClass 034 for Hookah tobacco; Molasses tobacco; Smoking tobacco
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /David Oskin/     Date: 04/30/2012
Signatory's Name: David Oskin
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312.890.2527

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: 85367937
Internet Transmission Date: Mon Apr 30 22:54:59 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201204302254596
05351-85367937-490bd7c2b3d7f6f0438924ab5
d78437d3-N/A-N/A-20120430222417570082