| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85772975 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85772975 |
| LITERAL ELEMENT | 2020 |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The following is submitted in response to the Official Action dated March 7, 2013.
In the Office Action, the Examining Attorney has refused registration of Applicant’s mark for the following reasons:
· The Examining Attorney believes there is a likelihood of confusion with pending U.S. Application No. 85/635,457 (“Cited Mark”).
· The Examining Attorney has requested the Applicant submit a claim of ownership of the mark “2010”, U.S. Registration No. 1844944.
Discussion
The Examining Attorney has indicated there is a likelihood of confusion for the mark CR-2020, U.S. Application No. 85/635,457, filed on May 25, 2012, for “colorants, excluding paints and colorants and tints for paints,” in Class 2, owned by ACF, LLC (dba Custom Rock).
The Applicant respectfully submits that the proposed mark “2020” will not create a likelihood of confusion with the Cited Mark. The Applicant brings to the notice of the Examining Attorney that the goods description for the Cited Mark specifically excludes “paints and colorants and tints for paints”. The Applicant submits that its mark is limited to the identification of “exterior paint” which is clearly distinguishable from the goods of the Cited Mark, namely “colorants, excluding paints and colorants and tints for paints”.
The Applicant recognizes that the parties respective goods would be related only if the owner of the Cited Mark who has prior rights expands their business to sell goods listed under the proposed mark. In response to this the Applicant relies on the opinion of the TTAB in the case of CNL Tampa Int'l Hotel Partnership, LP v. Palazzolo, wherein the Board refused to draw inference from third-party registrations that these goods and services are “legally related products” requiring a finding of likelihood of confusion based on the theory that if the prior registered mark had rights to expand its goods and services to include goods and services not listed at the time the mark was registered, then the prior registered mark would have rights to any and all goods and services in any way related to the goods and services listed at the time of registration. In such a situation, “if third-party registrations alone were sufficient to prove relatedness of goods and services, then virtually all consumer products and services would be related.” The Applicant therefore respectfully submits that reliance must not be placed on the third party registrations cited in the Office Action to refuse registration of the mark, because the third party registrations do not allow the assumption that the description of goods of the proposed mark and the description of goods of the Cited Mark will emanate from a single source particularly in view of the narrowing language set out in the goods description for the Cited Mark.
For the foregoing reasons, Applicant respectfully requests that the Examining Attorney's refusal of registration of the mark be withdrawn, and passage to publication of the Application is requested. In any matter which will advance the prosecution of this case, the Trademark Examining Attorney is invited to call the undersigned attorney for the Applicant at (617) 345-9000.
|
|
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of U.S. Registration Number(s) 1844944. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Andrea J Mealey/ |
| SIGNATORY'S NAME | Andrea J. Mealey |
| SIGNATORY'S POSITION | Attorney of Record, Massachusetts bar member |
| SIGNATORY'S PHONE NUMBER | 617-378-4348 |
| DATE SIGNED | 03/22/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Mar 22 13:26:47 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 30322132647120098-8577297 5-5008166aa7c438a9a17ea6b ed98ca37c28cf59383b201843 926b9e7eedbb432114-N/A-N/ A-20130322132220965675 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The following is submitted in response to the Official Action dated March 7, 2013.
In the Office Action, the Examining Attorney has refused registration of Applicant’s mark for the following reasons:
· The Examining Attorney believes there is a likelihood of confusion with pending U.S. Application No. 85/635,457 (“Cited Mark”).
· The Examining Attorney has requested the Applicant submit a claim of ownership of the mark “2010”, U.S. Registration No. 1844944.
Discussion
The Examining Attorney has indicated there is a likelihood of confusion for the mark CR-2020, U.S. Application No. 85/635,457, filed on May 25, 2012, for “colorants, excluding paints and colorants and tints for paints,” in Class 2, owned by ACF, LLC (dba Custom Rock).
The Applicant respectfully submits that the proposed mark “2020” will not create a likelihood of confusion with the Cited Mark. The Applicant brings to the notice of the Examining Attorney that the goods description for the Cited Mark specifically excludes “paints and colorants and tints for paints”. The Applicant submits that its mark is limited to the identification of “exterior paint” which is clearly distinguishable from the goods of the Cited Mark, namely “colorants, excluding paints and colorants and tints for paints”.
The Applicant recognizes that the parties respective goods would be related only if the owner of the Cited Mark who has prior rights expands their business to sell goods listed under the proposed mark. In response to this the Applicant relies on the opinion of the TTAB in the case of CNL Tampa Int'l Hotel Partnership, LP v. Palazzolo, wherein the Board refused to draw inference from third-party registrations that these goods and services are “legally related products” requiring a finding of likelihood of confusion based on the theory that if the prior registered mark had rights to expand its goods and services to include goods and services not listed at the time the mark was registered, then the prior registered mark would have rights to any and all goods and services in any way related to the goods and services listed at the time of registration. In such a situation, “if third-party registrations alone were sufficient to prove relatedness of goods and services, then virtually all consumer products and services would be related.” The Applicant therefore respectfully submits that reliance must not be placed on the third party registrations cited in the Office Action to refuse registration of the mark, because the third party registrations do not allow the assumption that the description of goods of the proposed mark and the description of goods of the Cited Mark will emanate from a single source particularly in view of the narrowing language set out in the goods description for the Cited Mark.
For the foregoing reasons, Applicant respectfully requests that the Examining Attorney's refusal of registration of the mark be withdrawn, and passage to publication of the Application is requested. In any matter which will advance the prosecution of this case, the Trademark Examining Attorney is invited to call the undersigned attorney for the Applicant at (617) 345-9000.