| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85491698 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK FILE NAME | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85491698 |
| LITERAL ELEMENT | RIPTIDE |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
Applicant, by and through its attorneys, submits the following Remarks in response to the Office Action issued on October 3, 2012. REMARKS The Office Action dated October 3, 2012 has been received and carefully considered. The Examining Attorney has continued to refuse registration of Applicant’s goods in Class 025 because he believes the mark is likely to cause confusion with the marks in U.S. Registration Nos. 3,353,749 and 3,378,004, both for the mark RIPTIDE, used on connection with clothing in Class 025. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited marks in connection with their respective goods. Based on the following remarks, Applicant requests that the refusal to register is withdrawn. There are several factors used to determine whether the likelihood of confusion exists between the two marks. Primarily, the factors include the similarity of the marks in their entirety as to appearance, sound, connotation and commercial impression; the similarity of the goods and services; the similarity of the trade channels; sophistication of the purchaser; the strength of the prior mark; the number and nature of similar marks in use on similar goods/services; any actual confusion; and other factors probative of the effects of use. In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). I. Other factors probative of the effects of use. Applicant has used the mark RIPTIDE in connection with beverages for over ten (10) years, since March of 2003. Additionally, Applicant has used the mark, RIPTIDE, on clothing, as an indicator as a secondary source of origin for approximately ten (10) years. Applicant has been using its new logo, the subject of this application, on its beverages and associated clothing for approximately five (5) years. Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited registrations because consumers seeing Applicant’s mark on clothing are going to understand that the Applicant is the source of the goods. It is well established that use of a mark as ornamentation on apparel manufactured by others qualifies as trademark use as long as long as the mark also serves the trademark purpose by identifying the source of a product (See In re Olin Corp., 181 USPQ 1982 (TTAB 1973); In re Expo’74, 189 USPQ 48 (TTAB 1975) and In re Bobosky v Adidas AG, 105 USPQ2d 1938 (D. Or. 2011). While in the case at hand, the issue is not ornamentation, it is significant that Applicant’s rights in its mark as used on clothing serve a trademark function by identifying the item’s secondary source. In addition to its prior registrations submitted with its Response dated September 20, 2012, Applicant submits use of the mark, RIPTIDE, in its logo form on its website and on a variety of its products as shown in Exhibit A. Applicant submits that when purchasers view Applicant’s distinctive logo tied in with the mark RIPTIDE on clothing, purchasers will understand that the mark is a secondary source indicator of Applicant. The mark does not tell the purchasing public the source of the shirt manufacturer, but rather that the owner of RIPTIDE beverages has sponsored the use on the shirt. Registrant, L.L.Bean, who is a clothing manufacturer, would not be able to use a similar logo in connection with any clothing as consumers would view Applicant’s logo and believe that Applicant is somehow sponsored or connected with the clothing. The Trademark Office’s allowance of the mark, RIPTIDE, in U.S. Registration No. 3,378,004 and the mark LA RIPTIDE in U.S. Registration No. 3,353,749 indicates that there is room in the marketplace for more than one RIPTIDE mark used on connection with clothing. Applicant submits that in light of the differences in the marks, the long term concurrent use of the marks, and most importantly, that consumers will view Applicant’s mark on clothing as the secondary source of sponsorship of Applicant’s primary goods of business, no confusion is likely. All of these factors combined would extinguish any likelihood of confusion among purchasers in the marketplace. Accordingly, Applicant respectfully requests that the Examining Attorney reconsider his refusal to register Applicant’s mark and allow registration of Applicant’s mark in Class 025.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_69220234106-163533143_._RWR121TM_ExhibitA_20130328__00064622_.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml5\RFR0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml5\RFR0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml5\RFR0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml5\RFR0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - samples of use of the mark |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Molly B. Markley/ |
| SIGNATORY'S NAME | Molly B. Markley |
| SIGNATORY'S POSITION | Attorney and Authorized for Applicant |
| SIGNATORY'S PHONE NUMBER | 248-649-3333 |
| DATE SIGNED | 03/28/2013 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Mar 28 16:41:13 EDT 2013 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XXX- 20130328164113934046-8549 1698-5007d4ef77cddd45639b 6318261314fa272a713a3b380 c0f974f5cd7826ecd69732-N/ A-N/A-2013032816353314323 8 |
| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Applicant, by and through its attorneys, submits the following Remarks in response to the Office Action issued on October 3, 2012.
REMARKS
The Office Action dated October 3, 2012 has been received and carefully considered. The Examining Attorney has continued to refuse registration of Applicant’s goods in Class 025 because he believes the mark is likely to cause confusion with the marks in U.S. Registration Nos. 3,353,749 and 3,378,004, both for the mark RIPTIDE, used on connection with clothing in Class 025. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited marks in connection with their respective goods. Based on the following remarks, Applicant requests that the refusal to register is withdrawn.
There are several factors used to determine whether the likelihood of confusion exists between the two marks. Primarily, the factors include the similarity of the marks in their entirety as to appearance, sound, connotation and commercial impression; the similarity of the goods and services; the similarity of the trade channels; sophistication of the purchaser; the strength of the prior mark; the number and nature of similar marks in use on similar goods/services; any actual confusion; and other factors probative of the effects of use. In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973).
I. Other factors probative of the effects of use.
Applicant has used the mark RIPTIDE in connection with beverages for over ten (10)
years, since March of 2003. Additionally, Applicant has used the mark, RIPTIDE, on clothing, as an indicator as a secondary source of origin for approximately ten (10) years. Applicant has been using its new logo, the subject of this application, on its beverages and associated clothing for approximately five (5) years.
Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited registrations because consumers seeing Applicant’s mark on clothing are going to understand that the Applicant is the source of the goods. It is well established that use of a mark as ornamentation on apparel manufactured by others qualifies as trademark use as long as long as the mark also serves the trademark purpose by identifying the source of a product (See In re Olin Corp., 181 USPQ 1982 (TTAB 1973); In re Expo’74, 189 USPQ 48 (TTAB 1975) and In re Bobosky v Adidas AG, 105 USPQ2d 1938 (D. Or. 2011). While in the case at hand, the issue is not ornamentation, it is significant that Applicant’s rights in its mark as used on clothing serve a trademark function by identifying the item’s secondary source. In addition to its prior registrations submitted with its Response dated September 20, 2012, Applicant submits use of the mark, RIPTIDE, in its logo form on its website and on a variety of its products as shown in Exhibit A. Applicant submits that when purchasers view Applicant’s distinctive logo tied in with the mark RIPTIDE on clothing, purchasers will understand that the mark is a secondary source indicator of Applicant. The mark does not tell the purchasing public the source of the shirt manufacturer, but rather that the owner of RIPTIDE beverages has sponsored the use on the shirt. Registrant, L.L.Bean, who is a clothing manufacturer, would not be able to use a similar logo in connection with any clothing as consumers would view Applicant’s logo and believe that Applicant is somehow sponsored or connected with the clothing. The Trademark Office’s allowance of the mark, RIPTIDE, in U.S. Registration No. 3,378,004 and the mark LA RIPTIDE in U.S. Registration No. 3,353,749 indicates that there is room in the marketplace for more than one RIPTIDE mark used on connection with clothing. Applicant submits that in light of the differences in the marks, the long term concurrent use of the marks, and most importantly, that consumers will view Applicant’s mark on clothing as the secondary source of sponsorship of Applicant’s primary goods of business, no confusion is likely. All of these factors combined would extinguish any likelihood of confusion among purchasers in the marketplace.
Accordingly, Applicant respectfully requests that the Examining Attorney reconsider his refusal to register Applicant’s mark and allow registration of Applicant’s mark in Class 025.
