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. 85956015 BOTTLE DOCK(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85956015) has been amended as follows:

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

LIKELIHOOD OF CONFUSION REFUSAL   The Examining Attorney has refused registration under Lanham Act Section 2(d) by stating that Applicant's mark, BOTTLE DOCK, when used on or in connection with "wine racks; wine bottle display racks", so resembles the marks in U.S. Registration No. 3874266 for BOTTLE DOCKER and logo for use in connection with "water bottles and bottles, sold empty; plastic bottle holders for beverages" as to be likely to cause confusion, or to cause mistake or to deceive.               The Examining Attorney generally must consider certain factors to determine whether a likelihood of confusion exists.  The marks in their entireties are compared for similarities in appearance, sound, connotation and commercial impression.  In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).          The Marks are Dissimilar                         If the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion in likely.  Kellogg Company v. Pack'em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991).  The mere fact that two trademarks contain a common element does not in itself create a likelihood of confusion.  This is true even if the trademarks at issue are used in relation to identical goods and services.  For example, the following trademarks with common elements were held not to be confusingly similar despite the fact that the marks are used in relation to the same goods and services:   (1) CRISTAL (alcoholic beverage) and CRYSTAL CREEK  (alcoholic beverage); (2) WIZZ (garden tool) and GEE WHIZ (garden tool); (3) BOBBERS (for fish) and CATFISH BOBBERS (restaurant services); (4) VARGAS (calendars) and VARGA GIRL (calendars); and (5) PARENTS (publications) and PARENTS DIGEST (publications).   Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 4714 U.S.P.Q.2d 59 (Fed. Cir. 1998); J. Wiss & Sons Co. v. Gee Whiz Tool Corp., 364 F.2d 910, 150 U.S.P.Q. 583 (6th Cir. 1966); In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986); In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992); Gruner + Jahr USA Publishing v. Meredith Corp., 991 F. 2d. 1072, 26 U.S.P.Q.2d 1583 (2d Cir. 1993).   In the present case, while both trademarks at issue contain the words "Bottle" and the word "Dock", this fact alone is not enough to overcome the differences between the marks in appearance, sound, connotation and commercial impression.    First, Applicant's trademark features the words "BOTTLE DOCK" with no logo. In contract, the cited mark contains the words "BOTTLE DOCKER" along with a highly stylized design element of an outline of a water bottle with a belt clip around the neck of the bottle and the letter "B" within the bottle with the letters "OTTLE" next to the "B" and outside of the bottle, and the letter "D" below the letter "B" within the bottle and the letters "OCKER" next to the "D" and outside of the bottle. In sum, the trademarks do not appear the same.   The BOTTLE DOCKER (+Design) and BOTTLE DOCK trademarks also do not sound the same when spoken.   The connotation and commercial impression of the trademarks are also very different. The word "Docker" is a verb that contains the suffix "er" meaning something that "does." For example, in this case the registrant's goods are a device that "docks" a plastic bottle to secure it to their person (on their belt, waistband etc). In contrast the applicants use of the word "Dock" is as a noun for a product wherein a consumer will essentially "dock" or "place" a bottle of wine in a secure location so it does not fall over. Additionally, the cited mark in which BOTTLE DOCKER (+Design) has a design element on the mark suggest that the goods will be holders for plastic bottles. In fact, the design element is an exact drawing of the registrant's goods. An image of the registrant's product is on their website and described as a plastic bottle holder that "easily clips to clothing, belts, backpacks, computer bags, purses, swimsuits, or luggage to keep refreshments available to you on the go, so you can hold what matters most." (Exhibit A)    4. The Extent of Potential Confusion is De Minimis             Another factor that should be considered in this case is the extent to which there is likely to be confusion. It is well established that the law is not concerned with mere theoretical possibilities of confusion, deception or mistake, but with the practicalities of the commercial world. Witco Chemical Co. v. Whifield Chemical Co.. 418 F.2d 1403, 164 U.S.P.Q. (BNA) 43 (C.C.P.A 1969). Applicant submits that the Examining Attorney's allegation of potential confusion is merely theoretical or de minimus. It is not consistent with trademark law to deny registration on this basis. Conclusion       In view of the foregoing remarks and amendments it is believed this application is in condition for prompt publication. Favorable action is therefore requested

EVIDENCE
Evidence in the nature of exhibit has been attached. Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for wine racks; wine and bottle display racks
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: wine racks; wine and bottle display racks; wine bottle display racksClass 020 for wine racks; wine bottle display racks
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use BOTTLE apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /polliegautsch/     Date: 11/19/2013
Signatory's Name: Pollie Gautsch, Esq.
Signatory's Position: Attorney of Record, CA bar member

Signatory's Phone Number: 858-344-5905

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: 85956015
Internet Transmission Date: Tue Nov 19 22:57:19 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20131119225719
815279-85956015-5004a66c4eb42d6b021f8bd7
28c69bf50d22ee637e9206d1265d4811f1be28bb
26-N/A-N/A-20131119225416965830