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. 85971146 SUBLIME(Standard Characters, see http://uspto.report/TM/85971146/mark.png) has been amended as follows:

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

Response to Office Action The Examiner has maintained the rejection of SUBLIME based on a purported likelihood of confusion with U.S. Registration No. 4,496,006 for SUBLIMES registered to Superior Cigars USA Inc. for use in connection with cigars, cigar cutters, and humidors. Applicant has amended the recitation of goods to expressly exclude smoke shops. Therefore, while the marks are somewhat similar, the goods are distinct; and the goods are sold in completely different channels. Registrants goods are sold in smoke shops, since registrant's goods are for use in connection with cigars, cigar cutters, and humidors. As amended, applicant's good exclude smoke shops. Accordingly, there is no likelihood of confusion between applicant's mark and the registered mark. Therefore, applicant's mark should be granted registration. The Subject Mark is Not Confusingly Similar to the Cited Trademark Likelihood of confusion must be analyzed in two steps. In the first step, the Examining Attorney must look at the marks for similarities in appearance, sound, connotation, and commercial impression. Similarity in appearance is one factor to be considered in determining the potential for likelihood of confusion. TMEP ?1207.01(b)(1). Even assuming that the marks are similar in overall appearance, sound, connotation, and commercial impression, such similarity alone is not sufficient to allow one to conclude the marks are likely to cause confusion. The Examining Attorney must compare the goods and services to determine if they are related or the activities surrounding their marketing are such that confusion as to source or origin is likely. The Examining Attorney must look at the marks for similarities in appearance, sound, connotation, and commercial impression. Similarity in appearance is one factor to be considered in determining the potential for likelihood of confusion. TMEP s1207.01(b)(1). Even assuming that the marks are similar in overall appearance, sound, connotation, and commercial impression, such similarity alone is not sufficient to allow one to conclude the marks are likely to cause confusion. The Examining Attorney must also compare the goods and services to determine if they are related or the activities surrounding their marketing are such that confusion as to source or origin is likely. The applicant concedes that the cited marks are somewhat similar. However, the marks are not exact and the goods are not so related as to cause confusion to a purchaser as to the origin or the source of the goods. Furthermore, the conditions surrounding the marketing of the applicant's goods and the registrant's goods are unlikely to cause confusion as to the source or the origin of the goods. Accordingly, it is applicant's belief that the Examining Attorney's concern regarding the likelihood of confusion between the marks will be put to rest. A. Applicant's Goods are Distinct from Registrant?s Goods The goods covered under the marks are totally different. Applicant's goods are directed to: Cartridges sold filled with propylene glycol for electronic cigarettes not sold in smoke shops; Cartridges sold filled with vegetable glycerin for electronic cigarettes not sold in smoke shops; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes not sold in smoke shops; Chemical flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shops; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shops; Electronic cigarettes not sold in smoke shops; and Electronic cigarettes for use as an alternative to traditional cigarettes not sold in smoke shops. In contrast, the Registrant's goods are directed to: tobaccos, namely cigars; cigar cutters and humidors. None of these are goods are related to applicant's goods. The Examining Attorney cites the SWISHER third party registration to show that "it is common for producers of electronic cigarettes to also produce tobacco products such as cigars under the same mark." The Examining Attorney suggests that this shows that the goods are "highly related". Applicant respectfully disagrees. The mere fact that it is common for producers of electronic cigarettes to also produce tobacco under the same mark is not dispositive on the issue of relatedness of the goods. E-cigarettes and vaporizing components do not necessarily have any nicotine, are not necessarily for smoking cessation, and provide new and different user experiences. Such new and different user experiences ranges from flavors to devices, which are completely distinct from the tobacco products cited by the Examining Attorney. B. The Marketing Channels Surrounding Applicant?s Goods and Registrant?s Goods are Distinct Registrant's goods, cigars, cigar cutters, and humidors are sold in smoke shops, as expressly determined by the Examining Attorney. A smoke shop is understood to be any retail establishment that sells tobacco products. In contrast, applicant's goods are not sold in smoke shops. Accordingly, the marketing channels for each of these goods is distinct with little or no overlap. The fact that the goods relate to products that can be inhaled does not infer that the goods will be encountered by the same consumers, nor that the goods are related. See Borg-Warner Chemicals, Inc. v. Helena Chemical Company, 225 U.S.P.Q. 222 (no likelihood of confusion as to identical marks used in the same industry where the goods/services are different and there is insufficient evidence to establish a reasonable basis that the goods/services will be encountered by the same purchasers). It is clear that the tobacco products sold in smoke shops are distinct from applicant's goods, which are not sold in smoke shops. In this case, the goods are sold in separate markets that cater to different purchasers. Therefore, applicant respectfully submits there will be no likelihood of confusion or a de minimis likelihood of confusion, if any, between the relevant purchasers. See TMEP s1207.01. Respectfully submitted,

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes
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: Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with propylene glycol for electronic cigarettes not sold in smoke shops; Cartridges sold filled with vegetable glycerin for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes not sold in smoke shopsClass 001 for Cartridges sold filled with propylene glycol for electronic cigarettes not sold in smoke shops; Cartridges sold filled with vegetable glycerin for electronic cigarettes not sold in smoke shops
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges
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: Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes not sold in smoke shops; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Chemical flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shops; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shopsClass 030 for Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes not sold in smoke shops; Chemical flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shops; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges not sold in smoke shops
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Electronic cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes
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: Electronic cigarettes; Electronic cigarettes not sold in smoke shops; Electronic cigarettes for use as an alternative to traditional cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes not sold in smoke shopsClass 034 for Electronic cigarettes not sold in smoke shops; Electronic cigarettes for use as an alternative to traditional cigarettes not sold in smoke shops
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.

SIGNATURE(S)
Response Signature
Signature: /tem/     Date: 10/24/2014
Signatory's Name: Timothy E. Manning
Signatory's Position: Attorney, Tucker Ellis LLP, Ohio Bar Member

Signatory's Phone Number: 216-696-5514

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: 85971146
Internet Transmission Date: Fri Oct 24 17:09:33 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2014102417093326
1401-85971146-50028c94b9d3351d62ad578bac
365c9d28429ead6c36fbb5cdc2bdf3473498b-N/
A-N/A-20141024170640974924