| PTO Form 1957 (Rev 9/2005) |
| 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) | |
|
RESPONSE TO OFFICE ACTION
Applicant, by and through its attorneys, submits the following Amendment and Remarks in response to the Office Action issued on March 20, 2012. REMARKS The Office Action dated March 20, 2012 has been received and carefully considered. The Examining Attorney has initially refused 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. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur. Based on the following remarks, Applicant requests that the refusal to register is withdrawn.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). The Examining Attorney has refused registration based on the prior U.S. Registratios for the marks LA RIPTIDE, and design, (“LA” has been disclaimed) and RIPTIDE, both used in connection with clothing. Applicant believes that no confusion is likely to occur by Applicant’s mark due to the long term use of Applicant’s prior registered trademark, RIPTIDE, the Applicant and the association with the purchasing public of Applicant’s mark, and the coexistence of the cited marks in connection with identical goods, and the concurrent use of Applicant’s mark I. Applicant’s prior registration of RIPTIDE and long term use associated with Applicant’s beverages. Applicant’s mark is printed on t-shirts and the public will recognize Applicant as a secondary source or sponsor of the t-shirts rather than the manufacturer of the t-shirts themselves. Applicant has used the mark, RIPTIDE, in connection with beverages at least as early as March 2003. Applicant is the owner of the mark RIPTIDE in standard character form (see attached TESS record of U.S. Registration No. 2,875,637, registered August 17, 2004) (see Attachment A) and the mark RIPTIDE SPLIT in standard character form (see attached TESS record of U.S. Registration No. 3,481,165) (see Attachment B). The term “riptide”, which appears to be the dominant portion of these marks has been used by Applicant for approximately ten (10) years and predates the registration of either of the cited marks. While the logo as shown in the current application was not in use until 2009, the common term at issue, RIPTIDE has been used by Applicant in connection with beverages and printed on t-shirts associated with beverages since 2003. Applicant has attached a copy of the former logo used with the term RIPTIDE as was used in 2003 (Attachment C). Applicant submits that its long standing use of the term “RIPTIDE” in connection with beverages, as evidenced by its prior U.S. Registration Nos. 2,875,637 and 3,481,165 and its long term use of the term “RIPTIDE” in connection with clothing as a secondary source of origin, diminishes any likelihood of confusion in the marketplace. II. Logo further distinguishes marks. While the cited marks are used to indicate the source of manufacture of the clothing, Applicant’s mark is used to indicate sponsorship or authorization by the source of the beverages. The logo used in connection with Applicant’s mark strengthens the association. The mark is seen in logo form on Applicant’s goods and this is reflected in the logo seen on Applicant’s clothing. Applicant’s use of the mark on clothing is more distinctive than just the term RIPTIDE. When customers view Applicant’s mark RIPTIDE in the distinctive logo form, they are going to recognize that the clothing bearing the mark is a secondary source or sponsor of Applicant’s beverages. Just as the “LA” portion of LA RIPTIDE is enough to distinguish it from the mark RIPTIDE so that the two can coexist in commerce without any confusion, the distinctive surfer design incorporated into Applicant’s mark is enough to distinguish it from the cited marks. III. Long term concurrent use with no confusion. In addition, Applicant’s mark, RIPTIDE, and design, and the cited marks, LA RIPTIDE, and design and RIPTIDE have all been used in connection with clothing for several years (over five (5) years) with no known confusion in the marketplace. This is due to the differences in the marks and the different nature of the use of the marks in commerce. Accordingly, Applicant submits that its mark is sufficiently different in nature to avoid any confusion in the marketplace. Accordingly, Applicant respectfully requests that the Examining Attorney allow Applicant’s mark to move forward with registration in Class 025. Additionally, the Examining Attorney requested that Applicant amend the identification of goods to clarify the type of clothing. Accordingly, the Applicant has amended the identification to specify the type of clothing goods in Class 025. Applicant has also corrected the dates of use of the logo in Class 032 from 2003 to 2009. This error was unintentional. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_50771969-161616860_._RWR121TM_AttachmentA_20120920__00016805_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml1\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml1\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_50771969-161616860_._RWR121TM_AttachmentB_20120920__00016803_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml1\ROA0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml1\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_50771969-161616860_._RWR121TM_AttachmentC_20120920__00016804_.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\854\916\85491698\xml1\ROA0006.JPG |
| DESCRIPTION OF EVIDENCE FILE | TESS records and Applicant's old logo |
| GOODS AND/OR SERVICES SECTION (025)(current) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | CLOTHING |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/00/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/00/2009 |
| GOODS AND/OR SERVICES SECTION (025)(proposed) | |
| INTERNATIONAL CLASS | 025 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | CLOTHING, NAMELY SHIRTS |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/00/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/00/2009 |
| GOODS AND/OR SERVICES SECTION (032)(current) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | |
| BEVERAGES, NAMELY, FLAVORED AND NON-FLAVORED SPARKLING WATER AND SPRING WATER; CAFFEINATED AND NON-CAFFEINATED DRINKS, NAMELY, SOFT DRINKS WITH OR WITHOUT FRUIT FLAVORING; FRUIT JUICES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/00/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/00/2003 |
| GOODS AND/OR SERVICES SECTION (032)(proposed) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | |
| BEVERAGES, NAMELY, FLAVORED AND NON-FLAVORED SPARKLING WATER AND SPRING WATER; CAFFEINATED AND NON-CAFFEINATED DRINKS, NAMELY, SOFT DRINKS WITH OR WITHOUT FRUIT FLAVORING; FRUIT JUICES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/00/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/00/2009 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Molly B. Markley/ |
| SIGNATORY'S NAME | Molly B. Markley |
| SIGNATORY'S POSITION | Attorney and Authorized Agent for Applicant |
| SIGNATORY'S PHONE NUMBER | 248-649-3333 |
| DATE SIGNED | 09/20/2012 |
| RESPONSE SIGNATURE | /Molly B. Markley/ |
| SIGNATORY'S NAME | Molly B. Markley |
| SIGNATORY'S POSITION | Attorney and Authorized Agent for Applicant |
| SIGNATORY'S PHONE NUMBER | 248-649-3333 |
| DATE SIGNED | 09/20/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Sep 20 16:21:20 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.X-201 20920162120801270-8549169 8-490582ced12dca15fcdc42b 9be49db1599-N/A-N/A-20120 920161616860365 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
RESPONSE TO OFFICE ACTION
Applicant, by and through its attorneys, submits the following Amendment and Remarks in response to the Office Action issued on March 20, 2012.
REMARKS
The Office Action dated March 20, 2012 has been received and carefully considered. The Examining Attorney has initially refused 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. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur. 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).
The Examining Attorney has refused registration based on the prior U.S. Registratios for the marks LA RIPTIDE, and design, (“LA” has been disclaimed) and RIPTIDE, both used in connection with clothing. Applicant believes that no confusion is likely to occur by Applicant’s mark due to the long term use of Applicant’s prior registered trademark, RIPTIDE, the Applicant and the association with the purchasing public of Applicant’s mark, and the coexistence of the cited marks in connection with identical goods, and the concurrent use of Applicant’s mark
I. Applicant’s prior registration of RIPTIDE and long term use associated with Applicant’s beverages.
Applicant’s mark is printed on t-shirts and the public will recognize Applicant as a secondary source or sponsor of the t-shirts rather than the manufacturer of the t-shirts themselves. Applicant has used the mark, RIPTIDE, in connection with beverages at least as early as March 2003. Applicant is the owner of the mark RIPTIDE in standard character form (see attached TESS record of U.S. Registration No. 2,875,637, registered August 17, 2004) (see Attachment A) and the mark RIPTIDE SPLIT in standard character form (see attached TESS record of U.S. Registration No. 3,481,165) (see Attachment B). The term “riptide”, which appears to be the dominant portion of these marks has been used by Applicant for approximately ten (10) years and predates the registration of either of the cited marks. While the logo as shown in the current application was not in use until 2009, the common term at issue, RIPTIDE has been used by Applicant in connection with beverages and printed on t-shirts associated with beverages since 2003. Applicant has attached a copy of the former logo used with the term RIPTIDE as was used in 2003 (Attachment C).
Applicant submits that its long standing use of the term “RIPTIDE” in connection with beverages, as evidenced by its prior U.S. Registration Nos. 2,875,637 and 3,481,165 and its long term use of the term “RIPTIDE” in connection with clothing as a secondary source of origin, diminishes any likelihood of confusion in the marketplace.
II. Logo further distinguishes marks.
While the cited marks are used to indicate the source of manufacture of the clothing, Applicant’s mark is used to indicate sponsorship or authorization by the source of the beverages. The logo used in connection with Applicant’s mark strengthens the association. The mark is seen in logo form on Applicant’s goods and this is reflected in the logo seen on Applicant’s clothing. Applicant’s use of the mark on clothing is more distinctive than just the term RIPTIDE. When customers view Applicant’s mark RIPTIDE in the distinctive logo form, they are going to recognize that the clothing bearing the mark is a secondary source or sponsor of Applicant’s beverages. Just as the “LA” portion of LA RIPTIDE is enough to distinguish it from the mark RIPTIDE so that the two can coexist in commerce without any confusion, the distinctive surfer design incorporated into Applicant’s mark is enough to distinguish it from the cited marks.
III. Long term concurrent use with no confusion.
In addition, Applicant’s mark, RIPTIDE, and design, and the cited marks, LA RIPTIDE, and design and RIPTIDE have all been used in connection with clothing for several years (over five (5) years) with no known confusion in the marketplace. This is due to the differences in the marks and the different nature of the use of the marks in commerce. Accordingly, Applicant submits that its mark is sufficiently different in nature to avoid any confusion in the marketplace.
Accordingly, Applicant respectfully requests that the Examining Attorney allow Applicant’s mark to move forward with registration in Class 025.
Additionally, the Examining Attorney requested that Applicant amend the identification of goods to clarify the type of clothing. Accordingly, the Applicant has amended the identification to specify the type of clothing goods in Class 025.
Applicant has also corrected the dates of use of the logo in Class 032 from 2003 to 2009. This error was unintentional.
