| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85903118 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85903118 |
| LITERAL ELEMENT | CHLOE |
| 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) | |
|
Normally, counsel of record in this matter would not make a reconsideration request. But here the Examining Attorney has erred in her final rejection and that makes a reconsideration request appropriate. The Examining Attorney has considered Applicant’s arguments and evidence and has concluded that they essentially prove “reverse confusion,” namely, that consumers who see CHLOETTE will think that the goods originate with the source of CHLOE. There are three problems with the Examining Attorney’s analysis. First, there is no evidence to support this conclusion. Second, it unreasonably dismisses the evidence submitted by the Applicant that CHLOE and CHLOETTE are different given names and that consumers are likely perceive them as such. The evidence establishes that CHLOE is one of the most popular given names for girls. If someone meets someone who is named CHLOETTE, there is simply no evidence that they will think that her true name is CHLOE. The situation is similar to PAULA and PAULETTE, CAROL and CAROLYN: two different given names. Finally, there is no evidence to support the Examining Attorney’s conclusion that the addition of the diminutive “-ETTE” to CHLOETTE will cause consumers to conclude that this is a smaller/shorter/lesser/abbreviated/”Small compact”/diminutive version of CHLOE. Given names simply do not function in that manner. They stand on their own, and while they may be shortened as a matter of grammatical convenience (e.g. WILL as a short form of WILLIAM), they are never lengthened. As stated above, there is no evidence to support the conclusion that CHLOE is a shortened form of CHLOETTE. At bottom, these are two distinctive given names. While they share the CHLOE formative, there is no evidentiary or logical basis for concluding that consumers could not distinguish between the two. On this record, the application should be passed for publication – and if the owner of the CHLOETTE mark has evidence that the two marks are peas in the same pod, then it can oppose the application. But on this record there is no evidence to support a Section 2 (d) objection. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /pwr/ |
| SIGNATORY'S NAME | Paul W. Reidl |
| SIGNATORY'S POSITION | Attorney of Record, Member CA Bar |
| SIGNATORY'S PHONE NUMBER | (650) 560-8530 |
| DATE SIGNED | 10/11/2013 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Oct 11 14:02:50 EDT 2013 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XX-2 0131011140250503279-85903 118-500ce581d7647296cd69c 5f2b949ce849dde1939a45d11 cbf884eb533e09463e-N/A-N/ A-20131011135916150812 |
| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Normally, counsel of record in this matter would not make a reconsideration request. But here the Examining Attorney has erred in her final rejection and that makes a reconsideration request appropriate.
The Examining Attorney has considered Applicant’s arguments and evidence and has concluded that they essentially prove “reverse confusion,” namely, that consumers who see CHLOETTE will think that the goods originate with the source of CHLOE.
There are three problems with the Examining Attorney’s analysis.
First, there is no evidence to support this conclusion.
Second, it unreasonably dismisses the evidence submitted by the Applicant that CHLOE and CHLOETTE are different given names and that consumers are likely perceive them as such. The evidence establishes that CHLOE is one of the most popular given names for girls. If someone meets someone who is named CHLOETTE, there is simply no evidence that they will think that her true name is CHLOE. The situation is similar to PAULA and PAULETTE, CAROL and CAROLYN: two different given names.
Finally, there is no evidence to support the Examining Attorney’s conclusion that the addition of the diminutive “-ETTE” to CHLOETTE will cause consumers to conclude that this is a smaller/shorter/lesser/abbreviated/”Small compact”/diminutive version of CHLOE. Given names simply do not function in that manner. They stand on their own, and while they may be shortened as a matter of grammatical convenience (e.g. WILL as a short form of WILLIAM), they are never lengthened. As stated above, there is no evidence to support the conclusion that CHLOE is a shortened form of CHLOETTE.
At bottom, these are two distinctive given names. While they share the CHLOE formative, there is no evidentiary or logical basis for concluding that consumers could not distinguish between the two. On this record, the application should be passed for publication – and if the owner of the CHLOETTE mark has evidence that the two marks are peas in the same pod, then it can oppose the application. But on this record there is no evidence to support a Section 2 (d) objection.